draft a snapshot guide to intellectual property systems

A Compendium of Information from Developing Countries of Asia, Africa and Latin America

A Snapshot Guide toIntellectual Property Systems

©Editors

Sudhir Kumar SoamB. Hanumanth RaoVictoria Henson-Apollonio

National Academy of Agricultural Research Management (NAARM), Hyderabad, India.

CGIAR-Central Advisory Service on Intellectual Property (CAS-IP), Rome, Italy.

Editors

Sudhir Kumar SoamB. Hanumanth RaoVictoria Henson- Apollonio

National Academy of Agricultural Research Management(NAARM), Hyderabad, India.

CGIAR-Central Advisory Service on Intellectual Property(CAS-IP), Rome, Italy.

A Snapshot Guide toIntellectual Property SystemsA Compendium of Information from DevelopingCountries of Asia, Africa and Latin America

Copyright©2009: National Academy of Agricultural Research Management (NAARM), Hyderabad,India and CGIAR Central Advisory Service on Intellectual Property (CGIAR CAS-IP),Rome, Italy.

Year of Publication: 2009

Published By: Director, NAARM, Rajendranagar, Hyderabad-500 407, India

Layout Design: P. Namdev, Technical Officer, NAARM, Hyderabad

Printed at: NAARM Offset Press, Rajendranagar, Hyderabad, India

Number of pages: 303

Citation: Soam, S.K., B. Hanumanth Rao and Victoria Henson-Apollonio (Eds). A SnapshotGuide to Intellectual Property Systems: A Compendium of Information fromDeveloping Countries of Asia, Africa and Latin America. NAARM, Hyderabad andCGIAR CAS-IP, Rome, 290 pages, 2009.

Disclaimer: It is a collective work of professionals from National Partners Initiative, a forum ofCGIAR CAS-IP. The views from the authors are not the official representation of IPsystems of respective countries. The purpose of compendium is to disseminate theIP systems knowledge in a well knit structured format using simple languagehighlighting key provisions concerning administrative and legal IP domain. TheAuthors own the copyright of the chapters/ annexure contributed by them.

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Preface v

Introduction vii

1. IP systems in Benin [Patent, PVP, Copyright, GI, TM, Design] 1Rita Afiavi Agboh-Noameshie

2. IP systems in Burkina Faso [Patent, PVP, Copyright, GI, TM, Design] 22Solange DAO

3. IP systems in China [Patent, PVP, Copyright, TM, Design] 38Lu Xin

4. IP systems in Costa Rica [Patent, PVP, Copyright, GI, TM, Design] 66Silvia Salazar

5. IP systems in India [Patent, PVP, Copyright, GI, TM, Design] 87S.K. Soam and B. Hanumanth Rao

6. IP systems in Indonesia [Patent, PVP, Copyright, GI, TM, Design] 112Nugroho Sulistyo Priyono

7. IP systems in Kenya [Patent, PVP, GI, TM, Design] 126Antony Mbayaki

8. IP systems in Malaysia [Patent, PVP, Copyright, GI, TM, Design] 139Rafeah A. Rahman

9. IP systems in Nigeria [Patent, PVP, Copyright, GI, TM, Design] 160Christopher Udeonwe Orji and Victor Ibigbami

10. IP systems in Peru [Patent, PVP, Copyright, GI, TM, Design] 171Pamela Ferro

11. IP systems in Philippines [Patent, PVP, Copyright, GI, TM, Design] 190Ildefonso Jimenez and Vivencio R. Mamaril

12. IP systems in Tanzania [Patent, PVP, TM] 205Patrick Ngwediagi

13. IP systems in Thailand [Patent, PVP, Copyright, GI, TM, Design, Trade secret] 214Chutima Ratanasatien

Annexure

A. Annex-I: IP systems in USA [Patent, PVP, Copyright, TM] 247Keith Jones

B. Annex-II: IP systems in European Union [Patent, PVP, Copyright, GI, TM] 267Isabel Lopez Noriega, Gabrielle Gagné, Alejandro Mejias and Francesca Manning

C. Annex-III: Authors’ Details 301

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Contents

Preface

It is a matter of great pleasure to the Academy and CGIAR CAS-IP that a compendiumcontaining IP systems information from 15 countries has been published. CGIAR CAS-IP deservesspecial mention because it provided a platform so that 21 Authors from 15 countries of various partsof the world could initiate and complete an immensely useful document. The team work done by theNational Partners Initiative (NPI) is highly appreciable.

For any IP practitioner it is often Herculean task to find out the key provisions of legislativeActs, latest amendments and integration with other legislative Act or procedural aspects of thatparticular country. I am amazed to see that complex legal context has been presented in a simple andstraight forward manner using one defined template for each country; the relationships with otherActs are also very well covered.

Often, it takes lot of time on web browsing to get simple information such as contact details,expenditure to be incurred for several tasks, any special requirement of a country etc. The compendiumprovides such information readily available to the readers.

In my view it is the first such IP effort at global level, which covers developing nations fromvarious continents with comparison from the two most developed IP systems of the world namely USand Europe. But to keep the dynamism, the work should be revised from time to time. I congratulateall the authors for this wonderful peace of work.

I am sure that the information provided in the publication would be useful for the IP practitionersfrom various countries in the field of agriculture and other subject areas also. In the special context ofIndia, the present work will be of immense practical use to the consortia partners of National AgriculturalInnovation Project (NAIP), a World Bank supported mega project run by Indian Council of AgriculturalResearch (ICAR).

P.K. JoshiDirector, NAARM, Hyderabad

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An Introduction to….

A Snapshot Guide to Intellectual Property (IP) Systems: A Compendium of Informationfrom Developing Countries of Asia, Africa and Latin America

Those of us that work in the area of intellectual property (IP) often long to find sources that cover acollection of information where it is easy to find what we want, is dependable, and is concise. ThisCompendium is that sort of work, (that we hope to update on an annual basis). The IP systems ofthirteen countries located in Asia, Africa and Latin America are briefly described, with a couple ofchapters on the E.U. and U.S. systems for comparative purposes. Links for official governmental (on-line) sites are provided for those that need official information. It represents the work of members ofthe National Partners Initiative (NPI), a community of intellectual property (IP) practitioners. The NPIis supported by its members and the funding generosity provided by the Directorate-General forInternational Cooperation (DGIS), Ministry of Foreign Affairs of the Netherlands and the Centers of theConsultative Group on International Agricultural Research (CGIAR), through the CGIAR-Central AdvisoryService on Intellectual Property (CAS-IP).

A disclaimer is that this compendium is not an official representation for these IP systems. However,links are provided so that the proper governmental offices can be contacted.

A special thanks to Dr. S.K. Soam of the National Academy of Agricultural Research Management(NAARM), who initiated this project within the NPI and co-authored the Chapter on the system in India;the Directors of NAARM, Dr. S.M. Ilyas and Dr P.K. Joshi, who supported this effort; to Mr. B. HanumanthRao of the International Crops Research Institute for the Semi-Arid Tropics (ICRISAT) for his authorshipand editorial work; and to the authors of the work: Solange Dao, Rafeah Rahman, Lu Xin, ChristopherOrji, Victor Ibigbami, Nugroho Priyono, Antony Mbayaki, Pamela Ferro, Keith Jones, Rita Agboh-Noameshie, Silvia Salazar, Jimenez Ildefonso, Vivencio R. Mamaril, Patrick Ngwediagi, ChutimaRatanasatien, Isabel Lopez Noriega, Gabrielle Gagné, Alejandro Mejias and Francesca Re Manning.

November 2009 Victoria Henson-ApollonioCAS-IP, Rome, Italy

vii

1

Chapter-1: IP Systems in Benin Patent

Basic information on acquisition of Patent rights Does your country have patent legislation in place [if not, please indicate its status, e.g. Bill under process]

Yes

Title of legislation, year and major amendments in your country

Annex 1 of the revised Bangui Agreement

State whether your country is a member to the Patent Cooperation Treaty (PCT)

Yes

State whether your country is a member of World Trade Organization (WTO)

Yes

Any essential requirement for foreigner/foreign organization to get protection in your country, e.g. presence of local agents/representatives

No. They should follow the regulation

Website to access legislation (indicate Internet link)

www.oapi.wipo.net

Registration formalities Protection criteria

An invention that is new, involves an inventive step and is industrially applicable. The invention may consist of or relate to a product or a process or to a use thereof.

Inventions not patentable a) inventions the exploitation of which is contrary to public policy or morality, provided that the exploitation of the invention shall not be considered contrary to public policy or morality merely because it is prohibited by law or regulation; (b) discoveries, scientific theories and mathematical methods; (c) inventions having as their subject matter plant varieties, animal species and essentially biological processes for the breeding of plants or animals other than microbiological processes and the products of such processes; (d) schemes, rules or methods for doing business, performing purely mental acts or playing games; (e) methods for the treatment of the human or animal body by surgery or therapy, including diagnostic methods; (f) mere presentations of information; (g) computer programs; (h) works of an exclusively ornamental nature; (i) literary, architectural and artistic works or any other aesthetic creation.

Country: Benin

http://www.oapi.wipo.net/

2

Forms required to fill and submit (1) Any person wishing to obtain a patent for an

invention shall file with the Organization or with the Ministry responsible for industrial property, or send to it by registered mail with a request for acknowledgement of receipt, (a) his application to the Director General of the Organization in a sufficient number of copies; (b) a document proving payment to the Organization of the filing and publication fees; (c) an unstamped, private power of attorney if the applicant is represented by an agent; (d) a sealed package containing in duplicate

(i) a specification of the invention for which the application has been made, set out clearly and completely so that a person having ordinary knowledge and skill in the art could carry it out, (ii) the drawings necessary or useful for the understanding of the invention, (iii) the claim or claims defining the scope of the protection sought, which shall not go beyond the contents of the specification referred to in subparagraph (i) above, (iv) a descriptive abstract summarizing the contents of the specification, the claim or claims referred to in subparagraph (iii) above and any drawings relevant to the abstract.

(2) Where the invention involves a microorganism or the use of a microorganism, a receipt attesting the deposit of the microorganism, issued by a depositary institution or an international depositary authority specified in the Implementing Regulations, shall in addition be filed. (3) The above documents shall be in one of the working languages of the Organization.

Any special provisions/formalities Payment of registration fees (cf site OAPI)

Duration of protection (years) Any patent granted or recognized under the Bangui Agreement shall remain in force for a period of 20 years as from its filing date.

Patent Office contact details (Mailing address, phone, website, email, etc.)

OAPI, BP 887, Yaoundé, Cameroun Tél.0023722205700 ; Fax 0023722205727,

State whether online submission is permitted, if so, indicate website

Not yet admitted

Cost (approx.) Applicable to natural persons (i.e. individuals)

Other than natural persons (i.e. organization

FCFA US $ FCFA US $ a) Registration b) Examination c) DUS Test d) Maintenance (renewal) e) Others, if any

Not available

Deposit requirements, if any All fees are paid at deposit time

3

Length of processing and release of Certificate (approx.), e.g. length of publication, examination, etc.

6 to 10 months

Rights conferred by the Act Major rights conferred to patentees

(1) The patent shall confer on its owner the exclusive right to work the patented invention. (2) The owner of the patent shall have the right to prohibit any person from working the patented invention. (3) the working of a patented invention means one or other of the following acts: (a) where the patent has been granted for a product: (i) manufacturing, importing, offering for sale, selling and using the product, (ii) holding the product for the purposes of offering it for sale, selling it or using it; (b) where the patent has been granted for a process: (i) using the process, (ii) engaging in the acts mentioned in subparagraph (a) above in relation to a product resulting directly from the use of the process. (4) The owner also has the right to assign the patent, transfer it by succession and enter into license contracts. (5) In addition to all other rights, remedies or actions available to him, the owner of the patent has the right to institute legal proceedings before the court of the place of the infringement against any person who commits an infringement of the patent by performing, without his consent, one of the acts mentioned in paragraph (3), or who performs acts that make it probable that an infringement will be committed

Limitations on Patent rights (i.e. acts not constituting infringement, e.g. research exemptions)

(1) The rights deriving from the patent shall not extend : (a) to acts in relation to subject matter brought on to the market on the territory of a member State by the owner of the patent or with his consent; (b) to the use of objects on board foreign aircraft, land vehicles or ships that temporarily or accidentally enter the airspace, territory or waters of a member State; (c) to acts in relation to a patented invention that are carried out for experimental purposes in the course of scientific and technical research; (d) to acts performed by any person who in good faith on the filing date, or where priority is claimed, on the priority date of the application on the basis of which the patent is granted on the territory of a member State, was using the invention or making effective and genuine preparations for such use, in so far as those acts are not different in nature or purpose from the actual or planned earlier use. (2) The right of the user referred to in paragraph (1)(d) may not be transferred or handed on otherwise than with the business or company or the part thereof in which the use or the preparations for use were made.

4

Other information Date of priority and requirements

(1) Any person wishing to avail himself of the priority of an earlier application shall be required to attach to his application for a patent or to send to the Organization at the latest six months following the filing date of his application (a) a written declaration stating the date and number of the earlier application, the country in which it was filed and the name of the applicant; (b) a certified true copy of the said earlier application; (c) if he is not the person who filed the earlier application, a written authorization from the applicant or his successors in title authorizing him to avail himself of the priority in question. (2) The applicant who, in respect of a single application, seeks to avail himself of two or more rights of priority shall comply with the provisions mentioned above for each of them; he shall also pay a fee for each priority right claimed and shall produce evidence of payment of the fee within the six-month period mentioned in paragraph (1) above. (3) Failure to present any one of the documents mentioned above within the time limit shall automatically entail, for the application under consideration, loss of the benefit of the priority right claimed. (4) Any document that reaches the Organization more than six months after the filing of the patent application shall be declared inadmissible.

Renewal process / procedure -- Opposition formalities -- What constitutes infringement of a patented invention

Any person who, by means of signs, notices, prospectuses, posters, marks or stamps, assumes the status of patentee without holding a patent granted in accordance with this Agreement and the Implementing Regulations under it or after an earlier patent has expired committed an infringement

Remedies for infringement The remedies for infringements constitute of a fine of 1,000,000 to 3,000,000 CFA francs (USD 2000-6000). In the event of recidivism, the fine may be doubled.

Any relationship with other legislations in your country

--

Website for public search of patents and for requesting copies of Patent Office records

www.oapi.wipo.net

Source for printed or electronic journals published by the Patent Authority

--

Provision for compulsory/voluntary licensing [Y or N]

Yes

Any other additional information [You are free to include any salient features of the protection system that are unique or different, which you would like to highlight.]

---


5

Plant Variety Protection

Basic information on acquisition of PVP rights Does your country have PVP legislation in place [if not, please indicate its status, e.g. Bill under process]

Yes


Annex 10 of the revised Bangui Agreement (February 1999)

Type of protection (include special features, if any) e.g. Patent or PVP registration or both

Plant variety certificate obtained by registration

State whether your country is member of the UPOV Convention

Yes


No


www.oapi.wipo.net

Registration formalities Types of varieties that can be protected e.g. new, extant variety, farmer’s variety, Essentially Derived Varieties (EDV)

Any variety that respond to the protection criteria below.

Whether protection is through notification, if yes, please state the crops notified for protection

--

Protection criteria (DUS etc.) In order to enjoy the protection afforded by this Annex, a variety shall be: (a) new; (b) distinct; (c) uniform; (d) stable; (e) the subject of a denomination established in accordance with the provisions of Article 23 of the annex

What cannot be protected All botanical taxa shall be protected by this Annex, except for wild species, that is to say species that have been neither planted nor improved by man.

Forms required to fill and submit The application shall contain: (a) the name and other required information relating to the applicant, the breeder and, where appropriate, the

Country: Benin


6

representative; (b) identification of the botanical taxon (Latin name and

common name); (c) the denomination proposed for the variety or a

provisional designation; and (d) a succinct technical description of the variety. Proof of payment of the required fees shall be attached to the application. The above mentioned documents shall be in one of the working languages of the Organization. The applicant may withdraw his application at any time prior to a determination that the application satisfies the necessary conditions leading to the issue of a plant variety Certificate.

Any special provisions/formalities --

Duration of protection (years) A plant variety certificate shall lapse 25 years after its date of issue. In order to maintain a plant variety certificate, an annual fee shall be paid to the Organization each year in advance, with the first fee due one year after the date of issue of the certificate. A period of grace of six months shall be afforded for payment of the annual fee after the due date, on payment of the prescribed additional fee.

Registry Office contact details (Mailing address, phone, website, email, etc.)

OAPI, BP 887, Yaoundé, Cameroun Tél.0023722205700 ; Fax 0023722205727


No

Cost (approx.)

Applicable to natural persons (i.e. individuals)


CFA $US FCFA $US a) Registration b) Examination c) DUS Test d) Maintenance (renewal) e) Others, if any

Deposit requirements, if any The totality of the fees must be paid when filing for the rights


6 to 10 months

Rights conferred by the Act Major plant breeders’ rights

(1) The right to a plant variety certificate shall belong to the breeder. (2) If two or more persons have bred a variety jointly, the right to a plant variety certificate shall belong to them jointly. (3) The right to a plant variety certificate may be assigned or transferred by succession. (4) The breeder shall be mentioned as such on the plant variety certificate. (5)(a) The applicant shall be deemed, unless proven

7

otherwise, to be the person entitled to a plant variety certificate. (b) Where a person not entitled to a plant variety certificate has filed an application, the entitled person may institute proceedings for transfer of the application or of the plant variety certificate if already issued. Proceedings for transfer shall be prescribed five years after the publication date of the issue of the plant variety certificate. No time limit shall apply to proceedings directed against a defendant acting in bad faith.

Farmers’ rights --

Exemptions to farmers, if any The rights conferred by a plant variety certificate shall not extend to use by a farmer on his own holding for propagating purposes of harvested material he has obtained by planting on his own holding a protected variety or a variety. This exception shall not apply to fruit, forestry or ornamental plants

Research exemptions The rights conferred by a plant variety certificate shall not extend to acts done for experimental or research purposes; and to acts done for the purpose of breeding other varieties


Priority may be claimed only within a period of 12 months as from the filing date of the first application.

Renewal process / procedure In order to maintain a plant variety certificate, an annual fee shall be paid to the Organization each year in advance, with the first fee due one year after the date of issue of the certificate. A period of grace of six months shall be afforded for payment of the annual fee after the due date, on payment of the prescribed additional fee. If an annual fee is not paid in accordance with the provisions of this paragraph, the holder of the plant variety certificate shall forfeit his rights.

Opposition formalities Any concerned person may, within the prescribed time limit, file opposition to the registration of a denomination based on any of the grounds for refusal The official services of the Contracting Parties may submit observations. Oppositions and observations shall be communicated to the applicant to enable him to respond to them or, where appropriate, to submit a new proposal. Where the proposal for a denomination does not comply with the provisions of Article 3, the Organization shall invite the applicant to submit a new proposal for a denomination. If the proposal is not submitted within the prescribed time limit, the application shall be rejected.

What constitutes infringement of a protected variety in your country (e.g. Producing, selling, importing and exporting of a registered variety without the permission of its breeder, etc?)

Any of the acts referred to in Article 29 [(a). production or reproduction (b) conditioning for the purpose of propagation; (c) offering for sale; (d) selling or other marketing; (e) exporting; (f) importing; (g) stocking for any of the purposes mentioned in (a) to (f) above].carried out on the territory of a member State by a person other than the holder of the plant variety certificate and without his consent

8

shall constitute an infringement.

Remedies for infringement Any person who knowingly commits an infringing act or an act of unfair competition shall be guilty of an offense and liable to a fine of between 1,000,000 (2000USD) and 3,000,000 CFA francs (6000USD) or imprisonment of between one month and six months or both such penalties, without prejudice to civil damages.


--

Brief note on benefit sharing mechanism to farmers / communities (state amount / percentage / process of payment)

--

Website for public search of PVP registrations and for requesting copies of PVP Office records

www.oapi.wipo.net

Source for printed or electronic journals published by the PVP Authority

--


--

Any other additional information [You are free to include any salient features of the protection system that are unique or different, which you would like to highlight.] ---


9

Copyright

Basic information on acquisition of Copyright protection Does your country have Copyright legislation in place [if not, please indicate its status, e.g. Bill under process]

Yes


Annex 7 of the revised Bangui Agreement

State whether your country is a member of Berne Convention for the International Registration of Copyrights

Yes


No. Should follow the regulations


www.oapi.wipo.net


Literary and artistic works, hereinafter referred to as works, constituting original creations of the mind in the literary, artistic and scientific fields,

Types of works entitled for Copyright protection (e.g. books, periodicals, artistic creations, etc.)

(i) works expressed in writing, including computer programs; (ii) lectures, addresses, sermons and other works composed of words and expressed orally; (iii) musical works, whether or not accompanied by words; (iv) dramatic and dramatic-musical works; (v) choreographic works and mimed works; (vi) audiovisual works; (vii) works of fine art: drawings, paintings, sculptures, engravings and lithographs; (viii) works of architecture; (ix) photographic works; (x) works of applied art; (xi) illustrations, maps, plans, sketches and three-dimensional works relating to geography, topography, architecture or science; (xii) expressions of folklore and works derived from folklore. Protection shall be independent of the mode or form of expression, of the quality and of the purpose of the work. Shall also be protected as work: (i) translations, adaptations, arrangements and other transformations of works and of expressions of folklore;

Country: Benin


10

(ii) collections of works, of expressions of folklore or of simple facts or data, such as encyclopedias, anthologies and databases, whether reproduced on a medium that may be processed by a machine or in any other form, which, by reason of the selection, coordination or arrangement of their contents, constitute creations of the mind.

Types of works not entitled for Copyright protection

(i) Official texts of a legislative, administrative or judicial nature or to the official translations thereof; (ii) News of the day; (iii) Simple facts and data.

Forms required to fill and submit

Application form

Any special provisions/formalities Payement of fees compulsory

Duration of protection (years) For the majority of works, the Bangui Agreement provides for a duration of protection of 70 years post mortem or post publication.




Not yet permitted


Other than natural persons (i.e. organization)

FCFA US $ FCFA US $ a) Registration - - - - b) Maintenance (renewal) - - - - c) Others, if any - - - - Deposit requirements, if any

Full payment during he filing


6 to10 months

Rights conferred by the Act Major rights conferred to CR owners

An author shall enjoy the exclusive right to exploit his work in any form whatsoever and to obtain monetary advantage there from. Subject to the provisions of Articles 10 to 21, the author of a work shall enjoy, in particular, the exclusive right to perform or authorize the following acts: (i) reproduce his work; (ii) translate his work; (iii) adapt, arrange or otherwise transform his work; (iv) distribute copies of his work to the public by means of sale or any other transfer of ownership or by rental; (v) perform his work in public; (vi) communicate his work (including performance) to the public by broadcasting (or retransmission) or by television; (vii) communicate his work (including performance or broadcasting) to the public by cable or by any other means. (2) The rental right referred to in paragraph (1)(iv) shall not apply to the rental of computer programs in those cases

11

where the program itself is not the essential subject matter of the rental.

Exemptions --


--

Opposition formalities --

What constitutes infringement of a copyrighted material

Copyright infringement occurs when someone other than the copyright holder copies the "expression" of a work. Copyright infringement can occur even if someone does not copy a work exactly. This example of copyright infringement is most easily apparent in music and art. Copyright infringement occurs if the infringing work is "substantially similar" to the copyrighted work.

Remedies for infringement -- Renewal process / procedure -- Any relationship with other legislations in your country

--

Source for printed or electronic journals published by the Copyright Authority

--

Searching and Request for copies of Copyright Office records [Y or N]

--


---

12

Geographical Indications

Basic information on acquisition of GI protection Does your country have Geographical Indications legislation in place [if not, please indicate its status, e.g. Bill under process]

Yes


Bangui Agreement, March 1977 (Annex VI), since February 1982 as last amended in February 1999

State if any other legislation takes care of GI registrations in your country [If there is no legislation, please indicate how best it can be protected in your country]

None


No


www.oapi.wipo.net


(1) Geographical indications shall be protected as such if they have been registered by the Organization or are to be treated as having been registered by virtue of an international convention to which the member States are party. (2) Geographical indications foreign to the territories of the member States of the Organization may be registered by the Organization only where provided for in an international convention to which the member States are party or in the enforcing legislation

Grounds for refusal of registration (a) indications which are contrary to morality or public policy or those which, in particular, are liable to deceive the public as to the nature, the source, the manufacturing process, the characteristic qualities or the suitability for their purpose of the goods concerned; (b) indications which are not protected in their country of origin or have ceased to be protected or have fallen into disuse in that country.

Forms required to fill and submit Any person wishing to obtain the registration of a geographical indication shall file with the Organization or with the Ministry responsible for industrial property, or send to it by registered mail with a request for acknowledgment of receipt, (a) an application to the Director General of the Organization in a sufficient number of copies; (b) a document proving payment to the Organization of the

Country: Benin


13

filing fee; (c) the geographical area to which the indication applies; (d) the products for which the indication is used; (e) the quality, reputation or other characteristic of the products for which the indication is used.

Any special provisions/formalities Payment of registration fees

Duration of protection (years) GIs are protected for indefinite period of time (as long as they are protected in their country of origin)




Not yet



FCFA US $ FCFA US $ a) Registration b) Maintenance (renewal) c) Others, if any Deposit requirements, if any --


6 to 10 months

Rights conferred by the Act Major rights conferred by registration

The registration of a geographical indication confers on the authorized users the exclusive right to use the geographical indication in relation to the goods in respect of which it is registered. The Registration offers better legal protection for an action for infringement.

Any exemptions / limitations / special provisions

--


--

Renewal process / procedure None

Opposition formalities (1) Any interested party may oppose the registration of a geographical indication by sending to the Organization, within a period of six months from the publication mentioned in Article 11 of this act, a written statement setting out the reasons for his opposition, which reasons must be based on an infringement either of the provisions of Articles 5 and 6 of this Annex, or of a prior right belonging to the opposing party. (2) The Organization shall send a copy of the statement of opposition to the applicant or to his agent, who may reply, setting out his reasons, within a once-renewable period of 3 months. The reply shall be forwarded to the opponent or to his representative. If his reply does not reach the Organization by the prescribed time limit, the applicant

14

shall be deemed to have withdrawn his application for registration and the registration shall be cancelled. (3) Before taking a decision on the opposition, the Organization shall, on request, hear each or either of the parties or their agents. (4) An appeal from the Organization’s decision on canceling the opposition shall lie to the High Commission of Appeal within a period of three months from the date of receipt of notice of the decision by the interested parties. (5) The Organization shall only cancel the registration in so far as the aforementioned opposition is valid. (6) The final decision on cancellation shall be published in the official Bulletin of the Organization.

What constitutes infringement of a registered GI product

It shall be unlawful to use, for commercial purposes, a registered geographical indication, or a similar designation, with respect to the products specified in the Register or similar products, even if the true origin of the products is indicated or if the geographical indication is in the form of a translation or is accompanied by terms such as .kind., .type., .make., .imitation or the like. It shall be unlawful to use in the designation or presentation of a product any means that infers or suggests that the product concerned originates in a geographical area other than its true place of origin in a manner likely to mislead the public as to the geographical origin of the product.

Remedies for infringement Any person intentionally making unlawful use, within the meaning of Article 15(3) and (5), of a registered geographical indication shall be liable to a term of imprisonment of not less than three months and not more than one year and to a fine of from 1,000,000 to 6,000,000 CFA francs (2000 to 6000 USD), or one only of these penalties.


--


--

Website for public search of GI registrations and for requesting copies of GI Office records

www.oapi.wipo.net

Source for printed or electronic journals published by the GI Authority

--


---


15

Trademark

Basic information on acquisition of TM rights Does your country have Trademark legislation in place [if not, please indicate its status, e.g. Bill under process]

Yes


Annex III of Bangui Revised Agreement

State whether your country is a member of Madrid System for the International Registration of Marks

No

State whether your TM legislation allows registration of goods or services or both as Trademarks

Yes both


No


www.oapi.wipo.net


Novelty; not contrary to morality or public policy

What can be registered Any visible sign used or intended to be used and capable of distinguishing the goods or services of any enterprise shall be considered a trademark or service mark, including in particular surnames by themselves or in a distinctive form, special, arbitrary or fanciful designations, the characteristic form of a product or its packaging, labels, wrappers, emblems, prints, stamps, seals, vignettes, borders, combinations or arrangements of colors, drawings, relief, letters, numbers, devices and pseudonyms.

What cannot be registered

A name or designation shall not be admissible as a trade name if, by reason of its nature or the use to which it may be put, it is contrary to morality or public policy and if, in particular, it is liable to mislead trade circles or the public as to the nature of the trade, industrial, craft or agricultural establishment of that name.

Forms required to fill and submit Any person wishing to obtain the registration of a mark shall file with the Organization or with the Ministry responsible for industrial property, or send it by registered mail with a request for acknowledgement of receipt (a) his application, addressed to the Director General of the Organization in a sufficient number of copies; (b) a document proving payment to the Organization of the filing

Country: Benin


16

fee; (c) an unstamped private power of attorney if the applicant is represented by an agent; (d) a reproduction of the mark, including a list of the goods or services to which the mark applies, with the corresponding classes of the International Classification of Goods and Services for the Purposes of the Registration of Marks (Nice Agreement); the number of reproductions of the mark to be supplied shall be laid down in the Implementing Regulations (e) The rules referred to in Article 2(2) in the case of a collective mark.

Any special provisions/formalities Payment of registration fees (cf site OAPI)

Duration of protection (years) The registration of a mark shall be valid for only ten years from the filing date of the application for registration; however, the ownership of a mark may be preserved indefinitely through successive renewals of the registration, which may be effected every ten years.




Not yet accepted. But the idea is strongly recommended at OAPI


Other than natural persons (i.e. organizations)

Cost (approx.)

CFA $US CFA $US a) Registration - b)Maintenance (renewal) -

c) Others, if any - Deposit requirements, if any All application fees are paid during the filing


06 to10 months

Rights conferred by the Act Major rights conferred to TM owners

(1) Registration of a mark confers on its owner the exclusive right to use the mark, or a sign resembling it, in connection with the goods or services for which it has been registered and similar goods or services. (2) Registration of the mark likewise confers on the owner the exclusive right to prevent all third parties from making use in business without his consent, of identical or similar signs for goods or services that are themselves similar to those for which the trademark or service mark has been registered where such use is liable to cause confusion. Where an identical sign is used for identical goods and services, a risk of confusion shall be presumed to exist.


(1) Any person wishing to avail himself of the priority of an earlier application shall be required to attach to his application for

17

registration or to send to the Organization at the latest three months following the filing date of his application (a) a written declaration stating the date and number of the earlier application, the country in which it was filed and the name of the applicant; (b) a certified true copy of the said earlier application. (2) The applicant who, in respect of a single application, seeks to avail himself of two or more rights of priority shall comply with the provisions mentioned above for each of them; he shall also pay a fee for each priority right claimed and shall produce evidence of payment of the fee within the three-month period mentioned in paragraph (1) above. (3) Any priority claim that reaches the Organization more than three months after the filing of the application shall be declared inadmissible.

Renewal process / procedure (1) The owner of a mark may only effect the renewal if he has paid the amount of fees prescribed by regulation. (2) The amount of the fees provided shall be paid during the last year of the ten-year period however, a six-month period of grace shall be allowed for payment of the said fee after the end of that year, subject to payment also of a surcharge fixed by regulation. (3) No changes may be made either to the mark or to the list of goods or services for which the said mark was registered, subject to the right of the registered owner to limit the list. (4) Renewal of the registration of a mark shall not entail renewed examination of the mark. (5) The Organization shall enter the renewal in the Special Register of Marks and publish it in the manner specified in this Annex, mentioning, where appropriate, any limitation of the goods or services. (6) A mark whose registration has not been renewed may not be registered for the benefit of a third party in respect of identical or similar goods or services until three years have elapsed since the term of the registration or renewal expired.

Opposition formalities (1) Any interested party may oppose the registration of a mark by sending to the Organization, within a period of six months from the publication, a written statement setting out the reasons for his opposition, which reasons must be based on an infringement either of the provisions of Article 2 or 3 of this Annex, or of a prior right belonging to the opposing party. (2) The Organization shall send a copy of the statement of opposition to the applicant or to his agent, who may reply, setting out his reasons, within a once-renewable period of three months. The reply shall be forwarded to the opponent or to his representative. If his reply does not reach the Organization by the prescribed time limit, the applicant shall be deemed to have withdrawn his application for registration and the registration shall be cancelled. (3) Before taking a decision on the opposition, the Organization shall, on request, hear each or either of the parties or their agents. (4) An appeal from the Organization’s decision on the opposition shall lie to the High Commission of Appeal within a period of three months from the date of receipt of notice of the decision by the interested parties. (5) The Organization shall only cancel the registration in so far as the aforementioned opposition is valid. (6) The final decision on cancellation shall be published in the official Bulletin of the Organization.

18


--

What constitutes infringement of a registered trademark

Without prejudice to any damages, a person who has affixed or caused to appear, by suppression or by any alteration whatsoever on manufactured articles, the name of a manufacturer or craftsman other than the originator, or the trade name of an establishment other than that where the articles were made, commit an infringement and shall be punished Any person who has knowingly displayed for sale or placed on the market articles marked with fictitious or falsified names shall also be punished.

Remedies for infringement Punishment by imprisonment of from three months to one year and by a fine of from 1,000,000 to 6,000,000 CFA francs (USD 2000-12000), or by either of these penalties.

Website for public search of TMs and for requesting copies of TM Office records

www.oapi.wipo.net

Source for printed or electronic journals published by the TM Registry Office

--


---


19

Designs

Basic information on acquisition of Designs protection Does your country have Designs legislation in place [if not, please indicate its status, e.g. Bill under process]

Yes


Annex 4 of the revised Bangui Agreement (February 1999)

State if any other legislation takes care of Designs registrations in your country [If there is no legislation, please indicate how best it can be protected in your country]

Regulations/law 2005-30 of April 10 2006

Any essential requirement for foreigner/foreign organization to get protection in your country, e.g. presence of local agents/representative

Foreigners shall enjoy the benefits of this Annex if they fulfill the conditions required

Website to access legislation (indicate Internet link) www.oapi.wipo.net Registration formalities Protection criteria

Protection of design rights begins once a design is registered. It is necessary to pay an annuity each year in order to maintain protection.

Types of works entitled for Design registration

(1) Any arrangement of lines or colors shall be considered a design, and any three-dimensional shape, whether or not associated with lines or colors, shall be considered a model, provided that the said arrangement or shape gives a special appearance to an industrial or craft product and may serve as a pattern for the manufacture of such a product. (2) If the object can at the same time be considered a new design and a patentable invention and if the elements constituting the novelty of the design are inseparable from those of the invention, the said object may only be protected under the provisions of Annex I on Patents or Annex II on Utility Models.

Types of works not entitled for Design registration

Designs the exploitation of which is contrary to public policy or morality may not be registered, on the understanding that the commercial exploitation of the said designs is not considered contrary to public policy or morality merely on account of its being prohibited by a legal or regulatory provision.

Forms required to fill and submit The requirements for filing a design application in OAPI are as follows: (a) Power of Attorney (simply signed) - can be late filed after notification;

Country: Benin


20

(b) 3 sets of formal drawings - required on the day of filing; (c) Certified priority document with sworn and verified English or French translation, can be late filed within 3 months.

Any special provisions/formalities With respect to item (c) above, the translation of the priority document must be accompanied by a signed declaration of the official translator which also carries a stamp or a seal. In the event that the translator does not have a stamp or a seal, notarized translations have in the past been accepted by OAPI.

Duration of protection (years) 5 years renewable twice


OAPI, BP 887, Yaoundé, Cameroun Tél.0023722205700 ; Fax 0023722205727


Not yet accepted. But the idea is strongly recommended at OAPI Applicable to natural persons (i.e. individuals)


Cost (approx.)

FCFA USA $US FCFA

a) Registration 1,150,000-1,250,000

2300-2500

- -

b)Maintenance (renewal) - c) Others, if any -

Deposit requirements, if any The totality of the prescribed fees must be paid

Length of processing and release of Certificate (approx.)

6 to 10 months


Exclusive right to exploit the said design and to sell or cause to be sold for industrial or commercial purposes the goods in which the design is incorporated without prejudice to the rights conferred by other legal provisions.


To take advantage from a priority, the latest date of filing at OAPI Office has to be six months after the earlier filing by another office. The priority right relating to prior registration have to be claimed during the application of an industrial design or model registration, and if this is not feasible during the following three months. The priority document has to be translated into French or into English if the original document is written in another language.

Renewal process / procedure (1) The owner of a mark may only effect the renewal if he has paid the amount of fees prescribed by regulation. (2) The amount of the fees provided for shall be paid during the last year of the ten-year period referred to in Article 19 of the Annex; however, a six-month period of grace shall be allowed for

21

payment of the said fee after the end of that year, subject to payment also of a surcharge fixed by regulation. (3) No changes may be made either to the mark or to the list of goods or services for which the said mark was registered, subject to the right of the registered owner to limit the list. (4) Renewal of the registration of a mark shall not entail renewed examination of the mark. (5) The Organization shall enter the renewal in the Special Register of Marks and publish it in the manner specified in this Annex, mentioning, where appropriate, any limitation of the goods or services. (6) A mark whose registration has not been renewed may not be registered for the benefit of a third party in respect of identical or similar goods or services until three years have elapsed since the term of the registration or renewal expired.

Limitations on Design (i.e. acts not constituting infringement)

Third party already using the design before the filing for registration


What constitutes infringement of a registered Design product

Any knowingly committed violation of the rights guaranteed by this act

Remedies for infringement Any knowingly committed violation of the rights guaranteed by this Annex shall be liable to punishment with a fine of 1,000,000 to 6,000,000 CFA francs (USD 2000 to 12,000).


--

Source for printed or electronic journals published by the Designs Authority

--

Searching and request for copies of Design Office records [Y or N]

--


An OAPI application automatically designates all member states. The cost of filing an OAPI design application is between about US$ 2300.00 and US$ 2500.00. To the above must be added a charge of about US$ 260.00 per Convention claim to priority.

Furthermore, it is possible to file a single application covering up to 100 variants of a design which belong to the same class of international application or the same range of articles. Surcharges of about US$ 300.00 for the first variant plus US$ 75.00 for each additional variant will then be applicable

22

Chapter-2: IP Systems in Burkina Faso

Patent

Basic information on acquisition of Patent rights Does your country has patent legislation in place [if yes, please fill in this table, or else indicate its status]

The African Intellectual Property Organization agreement (Bangui agreement) has settled dispositions, in the annex VI, for patent protection in the 16 member states (Benin, Burkina Faso, Cameroon, Centrafrique, Congo, Cote d’Ivoire, Gabon, Guinea, Guinea-Bissau, Guinea Equatorial, Mali, Mauritania, Niger, Nigeria, Senegal, Tchad and Togo). This agreement establishes a common protection system and procedure for all the member states.


Bangui Agreement of March 2nd, 1977, revised on February 24, 1999, annex I

State whether your country has PCT membership

Member of the PCT Union since March 21st, 1989.

Any essential requirement for foreigner/foreign organization to get protection in your country

It’s necessary for any foreigner or foreign organization to makes his/its application through a registered attorney


Novelty, inventive step, industrial applicability.

Inventions not patentable (a) inventions the exploitation of which is contrary to public policy or morality, provided that the exploitation of the invention shall not be considered contrary to public policy or morality merely because it is prohibited by law or regulation; (b) discoveries, scientific theories and mathematical methods; (c) inventions having as their subject matter plant varieties, animal species and essentially biological processes for the breeding of plants or animals other than microbiological processes and the products of such processes; (d) schemes, rules or methods for doing business, performing purely mental acts or playing games; (e) methods for the treatment of the human or animal body by surgery or therapy, including diagnostic methods; (f) mere presentations of information; (g) computer programs; (h) works of an exclusively ornamental nature; (i) literary, architectural and artistic works or any other aesthetic creation.

Forms required to fill and submit OAPI Form-B101

Any special provisions/formalities Nil

Country: Burkina Faso

23

Duration of protection Twenty (20) years from the date of application.


Organisation Africaine de la Propriété Intellectuelle (OAPI) BP 887, Yaoundé Cameroun Tél: (237)22205700/22203911 Fax:(237)22205727/22205721 E-mail : [email protected] Web site: http://www.oapi.wipo.net

Cost (approx.) in local currency (FCFA) in US $ a)Registration

225 000 560$

b)Examination

From 120 000 to 600 000 300$ to 1500$

c)Maintenance (renewal) - 2nd-5th year: 220 000 /year -6th-10th year: 375 000/year -11th-15th year: 500 000/year 16th-20th year: 650 000/year

550$ /year 935$/year 1250$/year 1650$/year

d)Others, if any There is many other taxes (see web site: http://www.oapi.wipo.net )


Exclusive right to use the patented invention

Research exemptions Acts in relation to a patented invention that are carried out for experimental purposes in the course of scientific and technical research are allowed.

Opposition formalities Nil

What constitutes infringement of a patented invention

Reception or sale, display for sale, or introduction into the national territory of one of the member states of one or more objects, without the right to do so, constitutes infringement.

Other information Date of priority

Date of the first application. To benefit from the date of priority, the applicant should join to his application a document related to the previous registration or an agreement from the first applicant to benefit from such priority.

Renewal process / procedure The renewal depends on the payment in time of the renewal taxes.


No

Website for public search of patents www.oa.espacenet.com and search facility of OAPI


Printed publications: - Le bulletin officiel de propriété industrielle de l’Organisation (BOPI) - Les fascicules de brevets

mailto:[email protected]



http://www.oa.espacenet.com/

24


AIPO is the national industrial property service for each of the member States and the central patent documentation and information body. A patent delivered is valuable for all the member states. For each of the member States also party to the Patent Cooperation Treaty, AIPO is the “National Office”. Any filing of an international patent application that includes the designation of at least one member State is equivalent to a national filing in each member State that is also party to the Patent Cooperation Treaty. The Bureau International of WIPO is the “Receiving Office” for international applications.

25


Basic information on acquisition of PVP rights Does your country has PVP legislation in place [if yes, please fill in this table, or else indicate its status]

The African Intellectual Property Organization agreement (Bangui agreement) has settled dispositions, in the annex X, for PVP in the 16 member states (Benin, Burkina Faso, Cameroon, Centrafrique, Congo, Cote d’Ivoire, Gabon, Guinea, Guinea-Bissau, Guinea Equatorial, Mali, Mauritania, Niger, Nigeria, Senegal, Tchad and Togo). This agreement establishes a common protection system and procedure for all the member states.


Bangui Agreement of March 2nd, 1977, revised on February 24, 1999, annex X

Type of protection (include special features, if any) e.g. Patent or PVP registration or both*

PVP registration

State whether your country has UPOV membership

No


Foreigners may also obtain plant variety certificates in accordance with the conditions laid down by the Annex


All botanical taxa shall be protected by this Annex, except for wild species, meaning, species that have been never planted nor improved by man.


--

Protection criteria (DUS etc.) A variety shall be: new, distinct, uniform, stable and have a denomination established in accordance with the provision of this Annex.

What cannot be protected Wild species

Forms required to fill and submit OAPI Form [OV10.01], OAPI Form [QTC] for technical confidential questionnaire to be used

Any special provisions/formalities See attachments Technical Questionnaire [QT] of OAPI to be submitted for application for PBRs

Duration of protection 25 year after the date of issue of the certificate


Organisation Africaine de la Propriété Intellectuelle (OAPI) BP 887 Yaoundé Cameroun


26

Tél : (237) 22 20 57 00/ 22 20 39 11 Fax : (237) 22 20 57 27/ 22 20 57 21 E-mail : [email protected] Web site: http://www.oapi.wipo.net


From 640 000 US $ 1280

b) Examination

The examination consists in many acts with different taxes.

c) DUS Test

625 000 US $ 1250

d) Maintenance (renewal) From first to fifth year: 250 000 From sixth to twenty fifth year: 300 000 Penalties in case of late renewal: 70 000

US $ 500 US $ 600 US $ 140 US $ 220

e) Others, if any Other taxes: 110 000 Rights conferred by the Act Major plant breeders’ rights

Exclusive right to exploit the variety; the right to prohibit any person from exploiting the variety; the right to assign or transfer the certificate by succession and conclude licensing contracts; right to legal proceedings against any person who infringes the rights conferred.

Farmers’ rights -

Exemptions to farmers Use by a farmer on his own holding for propagating purposes of harvested material he has obtained by planting on his own holding a protected variety or a variety; this exception shall not apply to fruit, forestry or ornamental plants; Acts done privately and for non-commercial purposes;

Research exemptions Acts done for experimental or research purposes; acts done for the purpose of breeding other varieties

Opposition formalities Once the application is published, any person may file with the organization within the prescribed time limit and in the prescribed form, written and reasoned objections to the issue of the plant variety certificate. Objections may be filed exclusively on the grounds that the variety is not new, not distinct, not uniform or not stable, or that the applicant is not entitled to protection.

What constitutes infringement of a protected variety in your country (e.g. Producing, selling, importing and exporting of a registered variety without the permission of its breeder, etc.)

Except for the exemptions mentioned above, any other exploitation of a protected variety, without the consent of the breeder, is an infringement.


Priority may be claimed only within a period of 12 months as from the filing date of the first application.



27

Renewal process / procedure The renewal of the certificate is conditioned by the payment of the

renewal fee.


No


Not provided

Website for public search of PVP registrations

This activity is relatively recent for OAP. WIPO has been the reception office until 2006.


Organisation Africaine de la Propriété Intellectuelle (OAPI) BP 887 Yaoundé Cameroun Tél : (237) 22 20 57 00/ 22 20 39 11 Fax : (237) 22 20 57 27/ 22 20 57 21 E-mail : [email protected] Web site: http://www.oapi.wipo.net


--



28

Copyright

Basic information on acquisition of Copyright protection Does your country has Copyright legislation in place [if yes, please fill in this table, or else indicate its status]

Yes


Law N° 032/99/AN of December 22nd, 1999, related to the protection of literary and artistic ownership in Burkina Faso. This law has abrogated the enactment N°83-016/CNR/PRES of September 29th, 1983 on the protection of copyright in Burkina Faso. The main amendment is the inclusion of dispositions on the protection of the rights of performers, phonograms producers and broadcasting organizations.


Burkina Faso In a member of Berne Convention for the protection of literary and artistic works since August 19th, 1963. The latest Act ratified is Paris, January 24th, 1976. (copyright does not need any registration formality; the exact denomination for the convention is: Berne convention for the protection of literary and artistic works.) There is an ISBN formality for publications but this has connection with IP.


Any work, protected by an International treaty to which Burkina Faso is member, shall be protected in the country. But for the need of collective management by the national copyright office, membership with this office is needed from the copyright owner. This registration is necessary only when the copyright office of the country where the organization has its headquarters doesn’t have a reciprocal convention with Burkina Faso copyright office. When it’s an individual, in addition to the inscription formality, the first publication of his work must have been done in Burkina Faso or in a delay of 30 days after such publication in another country or have his main residence in Burkina Faso. Without this inscription, any copyright owners can still resort to the Court in case of infringement of his rights in the country.


The only requirement is the originality of the work.

Grounds for refusal of registration Lack of originality or non copyrightable work.

Forms required to fill and submit Available on the copyright office web site: www.bbda.bf

Any special provisions/formalities Available on the same web site.

Duration of protection Copyright is protected in Burkina Faso during the life of the author and 70 years after his death.


http://www.bbda.bf/

29

This duration is 30 years from the achievement of a work of applied art; industrial model and design can also be registered as artistic works.


Bureau Burkinabé du Droit d’Auteur 01 BP 3926 Ouagadougou 01 Tél : + (226) 50 32 47 50 / 50 30 22 23 Email : [email protected]

Cost (approx.) in local currency (specify) in US $ a)Registration

7.000 FCFA for individual 10.000 FCFA for organization

18$ 25$

b) Maintenance (renewal) None c) Others, if any Rights conferred by the Act Major rights conferred to CR owners

Right of reproduction (comprise translation); right of representation (comprise broadcasting).

Exemptions Uses for information needs and education.


The use of any copyrighted work (or material), without the consent of the right owner is an infringement (a part from the exemptions cases).


The collective management needs the registration of copyrighted works to the copyright office, by the right owner. The registration date is a date of priority in case of opposition by another claimer of ownership.

Opposition formalities A written notice is made to the copyright office and when the Office fails in an amicable arrangement, the case is settle by the Court.



The Bangui agreement that has instituted the AIPO (African Intellectual Property Organization) and which is applicable in all the 15 member states


See the web site: www.bbda.bf


The moral right of the author is very important in Burkina Faso law. It’s imprescriptible, inalienable, perpetual and non seizable and lasts even when the work is in the public domain.

http://www.bbda.bf/

30


Basic information on acquisition of GI protection Does your country has Geographical Indications legislation in place [if yes, please fill in this table, or else indicate its status]

The African Intellectual Property Organization agreement (Bangui agreement) has settled protection provisions, in the annex VI, for geographical Indications in the 16 member States (Benin, Burkina Faso, Cameroon, Centrafrique, Congo, Cote d’Ivoire, Gabon, Guinea, Guinea-Bissau, Guinea Equatorial, Mali, Mauritania, Niger, Nigeria, Senegal, Tchad and Togo). This agreement establishes a common protection system and procedure for all the member States.


Bangui Agreement of March 2nd, 1977, revised on February 24, 1999, annex VI


No, only the Bangui Agreement takes care of GI registrations.


Foreigners shall enjoy the benefits of this Annex if they fulfil the conditions required by it.


Any indication that serves to identify a product as originating from a territory, a region, or a locality within that territory, in those cases where the quality, reputation or other specific characteristic of the product may be essentially attributed to such geographical origin, shall be protected as “geographical indication”.

Grounds for refusal of registration - indication that does not suit the definition of “geographical indication;”

- indication contrary to morality or public policy; - indication that are liable to deceive the public as to the nature,

the source, the manufacturing process, the characteristic qualities or the suitability for their purpose of the goods concerned;

- indications which are not protected in their country of origin or have ceased to be protected or have fallen into disuse in that country.

- Any application is rejected for default of payment for the registration fees

Forms required to fill and submit OAPI Form-IG601

Any special provisions/formalities No

Duration of protection GIs are protected for indefinite period of time (as long as they are

protected in their country of origin)


31




180 000 360$

b) Maintenance (renewal) - c) Others, if any Many others depending on the

circumstances http://www.oapi.wipo.net


Exclusive collective right, for the producers carrying on their activity in the geographical area specified in the Register, to use the registered geographical indication with respect to the products specified in the register, provided that such products possess the essential characteristic qualities specified in the register.

Opposition formalities Any interested party may oppose the registration of a geographical indication by sending to the Organization, within a period of six months from the publication, a written statement setting out the reasons for his opposition.

Any exemptions / special provisions --


It shall be unlawful to use, for commercial purposes, a registered geographical indication, or a similar designation, with respect to the products specified in the Register or similar products, even if the true origin of the products is indicated or if the geographical indication is in the form of a translation or is accompanied by terms such as .kind., .type., .make., .imitation or the like. It shall be unlawful to use in the designation or presentation of a product any means that infers or suggests that the product concerned originates in a geographical area other than its true place of origin in a manner likely to mislead the public as to the geographical origin of the product.


The date of the application is the date considered as priority date.

Renewal process / procedure The protection of geographical indication is, by principle, unlimited.


Law on civil liability


(No indication)

Website for public search of GI registrations

oa.espacenet.com





32


oa.espacenet.com


Geographical indications are referred in Bangui Agreement as “appellation d’origine” or “designation de provenance”. They shall be protected as geographical indications if they have been registered with OAPI as such. Geographical indications that have not been registered in a member State can’t be protected unless this protection is provided by an international Treaty to which the member States are parties.


33

Trademark


The African Intellectual Property Organization agreement (Bangui agreement) has settled dispositions, in the annex III, for trademarks and services marks protection in the 16 member states (Benin, Burkina Faso, Cameroon, Centrafrique, Congo, Cote d’Ivoire, Gabon, Guinea, Guinea-Bissau, Guinea Equatorial, Mali, Mauritania, Niger, Nigeria, Senegal, Tchad and Togo). This agreement establishes a common protection system and procedure for all the member states.


Bangui Agreement of March 2nd, 1977, revised on February 24, 1999, annex III


No


Marks applied to goods and services. Marks are optional though a States can declare them compulsory for goods or services they shall specify.


Foreigners shall enjoy the benefits of this Annex if they fulfil the conditions imposed by it. Any foreigner or foreign organization who wants to register a trademark should make the application through a registered attorney.




--

What can be registered Any visible sign used or intended to be used and capable of distinguishing the goods or services of any enterprise shall be considered a trademark or service mark.

What cannot be registered - a mark that lack distinctiveness ( i.e :the generic designation of a product)

- a similar mark is already used for similar good or service, or has an earlier priority date;

- a mark that is contrary to morality or law, or public policy; - a mark that can mislead consumers; - a mark which is an imitation of an official sign, unless there is an

authorization to use this sign.




34

Forms required to fill and submit OAPI Form- M301

Any special provisions/formalities For applicant not based in a member State, the submission should be

done through a registered attorney.

Duration of protection (years) 10 years with possibility of renewal every period of ten years.




There is two way to submit: sending directly the submission letter to OAPI or through the national structure in charge of industrial property rights.

Cost (approx.) As on December 31st, 2008



in local currency (FCFA) in US $ in local currency(FCFA)

in US $

a)Registration

897 000 1795$ 897 000 1 795$

b) Maintenance (renewal) 630 000 1 260 $ 630 000 1 260 $ c)Others, if any

- Restoration (depending on circumstances) - Many other taxes

375 000 or 650 000 See: http://www.oapi.wipo.net

750 $ or 1300$

375 000 or 650 000

750 $ or 1300$

Deposit requirements, if any

No particular requirements


About 07 months after the submission


The exclusive right to use the mark, or a sign resembling it, in connection with the goods or services for which it has been registered and similar goods or services.


The date of priority is the date on which the valid submission is received by the national structure in charge of industrial property rights of by OAPI.

Renewal process / procedure The renewal is made by sending a letter to the Director general of OAPI. It should be done in the tenth year of each period.

Opposition formalities Any interested party, can oppose to the registration of a mark in the six months of the publication. The opposition should be based on an anterior right belonging to the opposing party or on the fact that the mark is not eligible to registration as a mark.



35


The national law on Voir Concurrence déloyale


The use of the mark or any resembling without the authorization of the mark owner. But the owner doesn’t have the right to prohibit a third party from using in good faith a resembling sign when this use is limited to the purpose of mere identification or information and cannot mislead the public as to the source of the goods or services. The owners cannot also prohibit a third party from making use of the mark in relation to goods that have been lawfully sold under the mark on the national territory of the member State in which the right of prohibition is exercised, on condition that the goods have not undergone any alteration.

Remedies for infringement Civil action for the infringement of a mark; criminal action; infringement seizure.


www.oa.espacenet.com


““Le guide du déposant”, a printed guide for the submission of a registration. Available with OAPI or the members States national structures for industrial property rights.


A collective mark for goods or services can be registered by any group on the condition the group is officially registered.

http://www.oa.espacenet.com/

36

Designs

Basic information on acquisition of Designs protection Does your country has Designs legislation in place [if yes, please fill in this table, or else indicate its status]

The African Intellectual Property Organization agreement (Bangui agreement) has settled dispositions, in the annex IV for industrial designs protection in the 16 member States (Benin, Burkina Faso, Cameroon, Centrafrique, Congo, Cote d’Ivoire, Gabon, Guinea, Guinea-Bissau, Guinea Equatorial, Mali, Mauritania, Niger, Nigeria, Senegal, Tchad and Togo). This agreement establishes a common protection system and procedure for all the member states.


Bangui Agreement of March 2nd, 1977, revised on February 24, 1999, annex IV


Law N° 032-99 AN of 22 December 1999, on the protection of literary and artistic property in Burkina Faso. But this law protects designs only for their artistic value and not for their industrial application.


Foreigners shall enjoy the benefits of this Annex if they fulfill the conditions thereof. But they have to make their submission through a registered attorney.


To be eligible for registration, a design should be new, that means it has not been disclosed anywhere in the world by publication in tangible form, by use or by any other means before the filing date or (where applicable) before the priority date of the application for registration. But the novelty is not denied when the disclosure is the result of an obvious violation or an official exhibition.

Grounds for refusal of registration Industrial designs the exploitation of which is contrary to public policy or morality may not be registered.

Forms required to fill and submit OAPI Form-DM401

Any special provisions/formalities None

Duration of protection Five years with possibility of renewal every period of five years. There is not an obligation for the use of the exploitation of the design in a member state of OAPI






37

Cost (approx.) in local currency (CFA) as on December 31st, 2008

in US $

a)Registration 360 000 720$ b) Maintenance (renewal) 185 000 370 $ c)Others, if any - Restoration (depending on circumstances) -Publication of the restoration decision - Many others taxes

250 000 or 400 000 70 000 http://www.oapi.wipo.net

500$ or 800$ 140$


Any creator of an industrial design and his successors in title shall have the exclusive right to exploit the said design and to sell or cause to be sold for industrial or commercial purposes the goods in which the design is incorporated, subject to the conditions of this Annex, without prejudice to the rights conferred by other legal provisions.

Opposition formalities -- Any exemptions The registered industrial design shall not be binding on third

parties who, at the time of filing of the application for registration, were already exploiting the said design on the territory of one of the member States or had taken the necessary steps with a view to exploiting it. The said third parties shall be authorized to use the industrial design in his business or his own workshops or in those of other persons. This right may only be transferred with the business.


Exploiting the design, selling or cause to be sold for industrial or commercial purposes the goods in which the design is incorporated are infringement of the exclusive rights of the owner.


To benefit from a priority date, the filing with OAPI should be done in the six month following the first application with another Office. The legal date of a registration with OAPI is the date of the application.

Renewal process / procedure The renewal may be done for two consecutive periods of five years, simply by the payment of the fees. There is no obligation for real exploitation of the design in one of the member States.


The penal code in its provisions on counterfeiting


“Le guide du déposant”, a printed guide for the submission of a registration. Available with OAPI or the members States national structures for industrial property rights.

Any other additional information In case of joint ownership on a design, the owners may only jointly license the use of the design by a third party. Contractual provisions are very important in determining the ownership of designs created by employees.


38

Chapter-3: IP Systems in China

Patent


Yes


Patent Law of the People’s Republic of China Adopted on March 12, 1984; Amended for the first time on September 4, 1992; Amended again on August 25, 2000.


Yes

State whether your country is a member of World Trade Organ (WTO)

Yes


Any foreigner, foreign enterprise or other foreign organization having no habitual residence or business office in China applies for a patent, or has other patent matters to attend to, in China, it or he shall appoint a patent agency designated by the patent administration department under the State Council to act as his or its agent.


http://www.sipo.gov.cn/sipo_English/laws/lawsregulations/200203/t20020327_33872.htm


Any invention or utility model for which patent right may be granted must possess novelty, inventiveness and practical applicability.Novelty means that, before the date of filing, no identical invention or utility model has been publicly disclosed in publications in the country or abroad or has been publicly used or made known to the public by any other means in the country, nor has any other person filed previously with the Patent Administration Department under ‘the State Council’ an application which described the identical invention or utility mode and was published after the said date of filing. Inventiveness means that, as compared with the technology existing before the date of filing, the invention has prominent substantive features and represents a notable progress and that the utility model has substantive features and represents progress. Practical applicability means that the invention or utility model can be made or used and can produce effective results.

Country: China

39

The extent of protection of the patent right for invention or utility model shall be determined by the terms of the claims. The description and the appended drawings may be used to interpret the claims.

Inventions not patentable No patent right shall be granted for any invention-creation that is contrary to the laws of the State or social morality or that is detrimental to public interest. Method of agriculture can be patented. For any of the following, no patent right shall be granted:

• scientific discoveries; • rules and methods for mental activities; • methods for the diagnosis or for the treatment of diseases; • animal and plant varieties; • substances obtained by means of nuclear transformation.

For processes used in producing products referred to in items (4) of the preceding paragraph, patent right may be granted in accordance with the provisions of this Law.


Where an application for a patent for invention or utility model is filed, a request, a description and its abstract, and claims shall be submitted. Where an application for a patent for design is filed, a request, drawings or photographs of the design shall be submitted. Power of Attorney – If filed through Patent Agent

Any special provisions/ formalities

No

Duration of protection (years)

The duration of patent right for inventions shall be twenty years, the duration of patent right for utility models and patent right for designs shall be ten years, counted from the date of filing.


State Intellectual Property Office No.6 Xitucheng Road, Haidian District Bejing, P.R.China Post code: 100088 Telephone: (86-10) 62 01 32 76 (general) (86-10) 62 08 55 77 (PCT matters) Facsimile machine: (86-10) 62 01 96 15 (general) (86-10) 62 01 94 51 (PCT matters) Website: www.sipo.gov.cn Email: [email protected]


Online submission is permitted, http://www.cponline.gov.cn/



in local currency in US $ in local currency in US $ a) Registration (Only for invention patent)

950RMB 142 950 RMB 142

b) Examination (Only for invention patent)

2,500 RMB 373 2,500 RMB 373

c) Maintenance (Only for invention patent)

900RMB(1st to 3rd year)

1200RMB

(4- 6th year)

2000RMB(7-9th yr)

134(1st to 3rd year)

180

4- 6th year)

299(7-9th yr)

900RMB(1st to 3rd year)

1200RMB

(4-6th year)

2000RMB(7-9th yr)

134(1st to 3rd year)

180

(4-6th year)

299(7-9th yr)

http://www.sipo.gov.cn/

40

4000RMB(10th to

12th year)

6000RMB(13th to

15th year) 8000RMB(16th to 20th year)

597(10th to

12th year)

896(13th to

15th year) 1194(16th to 20th year)

4000RMB(10th to

12th year)

6000RMB(13th to

15th year) 8000RMB(16th

597(10th to

12th year)

896(13th to

15th year) 1194(16th to 20th year)

d) Others, if any item in RMB in USD

Additional charge for specification including

drawings

in excess of 30 pages, per page


50

100

7.5

15

Additional charge for claims in excess of 10 (per

claim) 150 22.5

Filing request for re-examination 1000 150

Patent certificate fee 255 38

Filing request for invalidation 3000 480

Application maintenance fee (per annum) 300 48

Delayed payment of annuity or maintenance fee

within six months +25% surcharge

Late entering into national phase of PCT

application 1000 150

Restoring the unity of the invention for PCT

application 900 134

Registration of change of bibliographic data for

agency 50 7.5


inventor, applicant, and patentee 200 30

Claiming priority

Claiming single conventional priority

Additional charge for each additional priority

80

80

12

12

Providing a certified of Chinese patent application 20 3

Filing request for extension of time limit

(for the same notice or office action) (per month)

The request for the first extension

The request for the second extension

300

2000

48

299

Restoring right 1000 150 Deposit requirements, if any

Where an invention for which a patent is applied for concerns a new biological material which is not available to the public and which cannot be described in the application in such a manner as to enable the invention to be carried out by a

41

person skilled in the art, the applicant shall deposit a sample of the biological material with a depositary institution designated by the Patent Administration Department under the State Council before, or at the latest, on the date of filing (or the priority date where priority is claimed), and submit at the time of filing or at the latest, within four months from the filing date, a receipt of deposit and the viability proof from the depository institution; where they are not submitted within the specified time limit, the sample of the biological material shall be deemed not to have been deposited.


Publication – 18 months from the date of filing Request for substantive examination Within 3 years from the date of filing. Normally, the grant of the patent right for invention is around 2 years, for utility model is around 1 year and for a design is around 8 months. Length of release of Certificate (approx.):Invention: 2.5years; Utility model: 1year; Design: 1year


After the grant of the patent right for an invention or utility model, except where otherwise provided for in this Law, no entity or individual may, without the authorization of the patentee, exploit the patent, that is, make, use, offer to sell, sell or import the patented product, or use the patented process, and use, offer to sell, sell or import the product directly obtained by the patented process, for production or business purposes.


None of the following shall be deemed an infringement of the patent right: (l) Where, after the sale of a patented product that was made or imported by the patentee or with the authorization of the patentee, or of a product that was directly obtained by using the patented process, any other person uses, offers to sell or sells that product; (2) Where, before the date of filing of the application for patent, any person who has already made the identical product, used the identical process, or made necessary preparations for its making or using, continues to make or use it within the original scope only; (3) Where any foreign means of transport which temporarily passes through the territory, territorial waters or territorial airspace of China uses the patent concerned, in accordance with any agreement concluded between the country to which the foreign means of transport belongs and China, or in accordance with any international treaty to which both countries are party, or on the basis of the principle of reciprocity, for its own needs, in its devices and installations; (4) Where any person uses the patent concerned solely for the purposes of scientific research and experimentation. Any person who, for production and business purposes, uses or sells a patented product or a product that was directly obtained by using a patented process, without knowing that it was made and sold without the authorization of the patentee, shall not be liable to

42

compensate for the damage of the patentee if he can prove that he obtains the product from a legitimate source.


(1) Where , within twelve months from the date on which any applicant first filed in a foreign country an application for a Patent for invention or utility model, or within six months from the date on which any applicant first filed in a foreign country an application for a patent for design, he or it files in China an application for a patent for the same subject matter, he or it may, in accordance with any agreement concluded between the said foreign country and China, or in accordance with any international treaty to which both countries are party, or on the basis of the principle of mutual recognition of the right of priority, enjoy a right of priority. (2) Where, within twelve months from the date on which any applicant first filed in China an application for a patent for invention or utility model, he or it files with the Patent Administration Department Under the State Council an application for a patent for the same subject matter , he or it may enjoy a right of priority. (3) Where the applicant claims priority, he or it shall pay the fee for claiming priority at the same time with the payment of the filing fee. If the fee is not paid or not paid in full within the time limit, the claim for priority shall be deemed not to have been made.

Renewal process / procedure Beyond the term of protection, renewal is not available. Applicant has to pay the annual fee after its right has been granted.

Opposition formalities Where, starting from the date of the announcement of the grant of the patent right, any entity or individual considers that the grant of the said patent right is not in conformity with the relevant provisions of this Law, it or he may request the Patent Reexamination Board to declare the patent right invalid. Anyone requesting invalidation or part invalidation of a patent right shall submit a request and the necessary evidence in two copies. The request for invalidation shall state in detail the grounds for filing the request, making reference to all the evidence as submitted, and indicate the piece of evidence on which each ground is based.


The exploitation of a patent , that is, make, use, offer to sell, sell or import the patented product, or use the patented process, and use, offer to sell, sell or import the product directly obtained by the patented process, for production or business purposes without the authorization of the patentee.

Remedies for infringement The amount of compensation for the damage caused by the infringement of the patent right shall be assessed on the basis of the losses suffered by the patentee or the profits which the infringer has earned through the infringement. If it is difficult to determine the losses which the patentee has suffered or the profits which the infringer has earned, the amount may be assessed by reference to the appropriate multiple of the amount of the exploitation fee of that patent under contractual license.

43


No


http://www.sipo.gov.cn/sipo_English/




Yes


In China, the State Intellectual Property Office grants three types of patents: invention, utility model and design. In this form, the information provided only focuses on invention patent on some items. The costs listed in this form are related to invention patent only, as for the cost of utility model and design, please refer to the designed form, since the cost of utility model patent is the same as design patent.

44



Yes


Regulations of the People’s Republic of China on the Protection of New Varieties of Plants, issued on March 20, 1997, conforms to the 1978 Act of the UPOV convention in principal. It is only a Regulations issued by the state council


PVP registration


Yes


Where any foreigner, foreign enterprise or foreign organization with no habitual residence in China applies for variety right with the Office for Protection of Varieties, it shall appoint an agency to act as his or its agent.


http://www.cnpvp.cn/en/index.html


New, extant variety and essentially derived variety (EDV).


Yes, As of 2008, 152 genera or species are notified, in which 74 are determined and announced by the Ministry of Agriculture (MOA) and 78 are done by the State Forestry Administration (SFA). For detailed information, please refer to the PVP Authority’s website http://www.cnpvp.cn/en/index.html (MOA); and www.cnpvp.net/(SFA)

Protection criteria (DUS etc.) Novelty- Novelty means that the propagating material of the new plant variety in respect of which variety rights are applied for has not been sold prior to the filing date of the application, or has not been for sale, with the consent of the breeder, for more than one year within the territory of China; the propagating material of vines, forest trees, fruit trees and ornamental plants must not have been for sale for more than six years, or the propagating material of other plant varieties for more than four years, in a foreign territory. Distinctiveness- Distinctness means that the plant variety in respect of which variety rights are applied for must noticeably distinguish it from any other plant variety known prior to the filing of the application.

Country: China

45

Uniformity- Uniformity means that the plant variety in respect of which variety rights are applied for is uniform, subject to the variation that may be expected, in its relevant features or characteristics after propagation. Stability- Stability means that the plant variety in respect of which variety rights are applied for keeps its relevant features or characteristics unchanged after repeated propagation or at the end of a particular cycle of propagation. Any plant variety in respect of which variety rights are granted shall have an adequate denomination and shall be part of the botanical genera and species included in the national list of protected plant varieties.

What cannot be protected No variety right shall be granted to any new variety of plants that is detrimental to public interest and the ecological system.

Forms required to fill and submit Application documents shall include: 1. Application forms 2. Specification of the variety 3. Photograph(s) of the variety and the similar variety 4. The power of attorney (Any foreigner, foreign enterprise or

foreign organization with no permanent residence in China shall appoint an agency to act as his or its agent.)

Any special provisions/formalities The photographs submitted by the applicant shall be in conformity

with the following requirements: Helpful to illustrate the distinctness of a variety in respect of which the application is filed; showing on the same photograph the comparison concerning the same features or characteristic between a variety in respect of which an application for variety right is filed and the similar variety or varieties; in color, or where necessary, in black and white as may be required by the Office for Protection of Varieties; of a size of 8.5 cm x12.5 cm or of 10 cm x15 cm; and accompanied by a brief graphic description.

Duration of protection (years) The term of protection of variety rights, counted from the date of grant thereof, shall be 20 years for vines, forest trees, fruit trees and woody ornamental plants and 15 years for other plants.


The Ministry of Agriculture part: Mail address: The Office for the Protection of New Varieties of Plants, MOA, P.R.China, Building 20, Maizidian Street, Chaoyang District, Beijing 100125, P.R.China Tel: +86-10-65926315, +86-10-65925051 Fax:+86-10-65923176 Website: http://www.cnpvp.cn E-mail: [email protected]; The State Forestry Administration part: The Office for the Protection of New Varieties of Plants, SFA NO.18 Hepingli East Street Beijing,100714 Tel: +86 10 84239104 Fax: +86 10 84238883 Website:http://www.cnpvp.net Email:[email protected]

http://www.cnpvp.cn/


46


No



in local currency in US $ in local currency in US $ a)Registration

1000RMB 150 1000RMB 150

b)Examination

2500RMB 373 2500RMB 373

c)DUS Test

0 0

d) Maintenance (renewal) 1000RMB(1st to 6th year) 1500RMB(1st to 20th year)

150 (1st to 6th year) 225 (1st to 20th year)

1000 (1st to 6th year) 1500 (1st to 20th

year)

150 (1st to 6th year) 225 (1st to 20th year)

e) Others, if any No No

Deposit requirements, if any The applicant or the variety right holder shall submit the propagating materials in accordance with requirements of ‘Notification for submission propagating material’ or ‘Notification for re-submission propagating material’. The quality and quantity of the propagating materials are determined and published by the authorities and shall be included in the notification as well.


The examining and approving authorities shall complete the preliminary examination within six months after the variety rights application is formally received. Where the variety rights application is found acceptable on preliminary examination, the examining and approving authorities shall have it published and serve notice on the applicant to pay the examination fee within three months for substantive examination and DUS testing. Normally, the DUS testing shall be conducted in two growing seasons. Where the variety rights application is found to be in conformity with the provisions of these Regulations on substantive examination, the examining and approving authorities shall take a decision to grant the variety right, issue the new variety rights title, and have it registered and published. Length of release of Certificate (approx.): 3-4years


The entity which or the person who has accomplished the breeding has an exclusive right in their protected variety. Except otherwise provided in these Regulations, no other entity or person shall, without the consent of the holder of the variety rights (hereinafter referred to as the ”variety rights holder”), produce or sell for commercial purposes the propagating material of the said protected variety, or use for commercial purposes the propagating material of the protected variety in a repeated manner in the production of the propagating material of another variety.

Farmers’ rights The item of farmer’s rights is not existing in PVP legislation

Exemptions to farmers, if any The use for propagating purposes by farmers, on their own holdings, of the propagating material of the protected variety

47

harvested on their own holdings shall not require authorization from, or payment of royalties to, the variety rights holder.

Research exemptions Exploitation of the protected variety for breeding and other scientific research activities shall not require authorization from, or payment of royalties to, the variety rights holder.


Where, within 12 months from the date on which any applicant has first filed an application for variety rights in a foreign country, the said applicant files an application for variety rights in China in respect of the same new plant variety, he or it may, in accordance with any agreement concluded between the said foreign country and the People’s Republic of China or any international treaty to which both countries are party, or on the basis of the principle of mutual recognition of the right of priority, enjoy a right of priority. Any applicant who claims the right of priority shall make a written statement when the application is filed, and shall submit, within three months, a copy of the variety rights application documents that were first filed, as confirmed by the original receiving authority; if the applicant fails to make the written statement or fails to submit a copy of the variety rights application documents under the provisions of these Regulations, the claim to the right of priority shall be deemed not to have been made.

Renewal process / procedure Beyond the term of protection, renewal is not available. Applicant has to pay the annual fee after its right has been granted.

Opposition formalities During the period beginning from the date on which an application for variety right is filed and up to the date of grant of variety right, anyone may raise opposition with the Office for Protection of Varieties to any application for variety right, provide relevant certifying documents and state the reasons thereof. In the absence of such certifying documents, the said opposition shall be refused by the Office for Protection of Varieties. No special form for opposition.


Where the propagating material of the protected variety is produced or sold for commercial purposes without the consent of the variety rights holder; and where the protected variety is counterfeited: The following acts are considered as counterfeiting: (i)printing or using a counterfeited certificate for variety right, number of variety right application, number of variety right or the other marking for variety right application or for variety right; (ii)printing or using the number of variety right application or the other marking of variety right application that is rejected, deemed to have been withdrawn or withdrawn; (iii)printing or using certificate for variety right, number of variety right or other marking of variety right that is terminated or that have been declared invalid; (iv)producing or putting on sale varieties that fall under items (i), (ii) and (iii) of this Rule; (v)producing or putting on sale a variety that passes itself off as a variety in respect of which variety right is applied for or as a variety that is granted with variety right; and (vi)any other acts which are liable to mislead others to take a variety that has not applied for variety right as a variety in respect of which an application for variety right is filed or take a variety that

48

is not granted variety right as one that is granted variety right.

Remedies for infringement Generally, there are four ways to fix on the amount of the punishment fine: 1) Based on the loss of the person whose variety under protection is used unlawful. 2) According to the earnings which gained from the unlawful use of the variety under protection. 3) Depending on the principle that at least one but not exceeding five times more than the loyalty. 4) Judging by the court less than 500, 000RMB. Only when the 1)�2)or 3) item can not be used to account the amount of punishment, then the item 4) can be used by the judge.


No


No


http://www.cnpvp.cn/?id=36 (MOA); and www.cnpvp.net(SFA)


http://www.cnpvp.cn/?id=36 (MOA); www.cnpvp.net(SFA)


Yes


The Ministry of Agriculture and the State Forestry Administration of China are jointly responsible for PVP affairs, according to the division of their job responsibilities. The Ministry of Agriculture is in charge of food crops, cotton, oil crops, bast-fiber plants, sugar crops, vegetables (including water melon and mask melon), tobacco, mulberries, tea plants, fruit trees (except for dry fruits), ornamental plants (except ligneous plants), grasses, green manure, herbaceous medicinal plants, edible fungi, protonema, rubber tree and other plants. The State Forestry Administration is in charge of forest trees, bamboo, and woody rattan, ornamental woody plants (including flowering woody plants), fruit trees (nut trees), woody plants for oil products, plants for beverage production, plants for condiment production and medicinal woody plants. Accordingly, there are two implementing rules in accordance with the PVP Regulations, and the application forms are different from each other as well. For detailed information, please log on the websites: www.cnpvp.cn/(MOA) and www.cnpvp.net/(SFA) respectively. In China, there are two channels for enforcement of PVP Regulations, one is the People’s Court, and the other is the Administrative Department of Agriculture and Forestry.

http://www.cnpvp.net/

http://www.cnpvp.net/

http://www.cnpvp.cn/(MOA)

http://www.cnpvp.net/(SFA)

49

Copyright


Yes


Copyright Law of the People’s Republic of China. Adopted on September 7, 1990, promulgated on September 7, 1990, and put into force on June 1, 1991, revised for the first time on October 27, 2001.


Yes


No need of agents/representatives. According to Article 2 of the Law, Any work of a foreigner or stateless person which is eligible to enjoy copyright under an agreement concluded between the country to which the foreigner belongs or in which he has habitual residence and China, or under an internationa1 treaty to which both countries are party, shall be protected in accordance with this Law. Works of foreigners or stateless persons first published in the territory of the People's Republic of China shall enjoy copyright in accordance with this Law. Any work of a foreigner who belongs to a country which has not concluded an agreement with China, or which is not a party to an international treaty with China or a stateless person first published in an country which is a party to an international treaty with China, or in such a member state or nonmember state, shall be protected in accordance with this Law.


http://www.sipo.gov.cn/sipo_English/laws/relatedlaws/200204/t20020416_34754.htm


Works of Chinese citizens, legal entities or other organizations, whether published or not, shall enjoy copyright in accordance with this Law. Any work of a foreigner or stateless person which is eligible to enjoy copyright under an agreement concluded between the country to which the foreigner belongs or in which he has habitual residence and China, or under an internationa1 treaty to which both countries are party, shall be protected in accordance with this Law. Works of foreigners or stateless persons first published in the territory of the People's Republic of China shall enjoy copyright in accordance with this Law. Any work of a foreigner who belongs to a country which has not concluded an agreement with China, or which is not a party to an international treaty with China or a stateless person first published in an country which is a party to an international treaty with China, or in such a member state or nonmember state, shall be protected in accordance with this Law.

Country: China

50


“Works” mentioned in this Law shall include works of literature, art, natural science, social science, engineering technology and the like made in the following forms: (1) written works; (2) oral works; (3) musical, dramatic, quyi (it is a kind of Chinese folk art forms, including ballad singing, story telling, comic dialogues, clapper talks, cross talks, etc), choreographic and acrobatic art works; (4) works of fine art and architecture; (5) photographic works; (6) cinematographic works and works created in a way similar to cinematography; (7) drawings of engineering designs and product designs, maps, sketches and other graphic works as well as model works; (8) computer software; (9) other works as provided in laws and administrative regulations.


Works the publication or distribution of which is prohibited by law shall not be protected by this Law. This Law shall not be applicable to: (1)laws, regulations, resolutions, decisions and orders of state organs; other documents of legislative, administrative or judicial nature; and their official translations; (2) news on current affairs; (3) calendars, numerical tables, forms of general use and formulas.

Forms required to fill and submit Yes


Duration of protection (years) The rights of authorship, alteration and integrity of an author shall be unlimited in time. In respect of a work of a citizen, the term of protection of the right shall be the lifetime of the author and fifty years after his death, expiring on December 31 of the fiftieth year after his death. In the case of a work of joint authorship, such term shall expire on December 31 of the fiftieth year after the death of the last surviving author. The term of protection where the copyright belongs to a legal entity or another organization, or in respect of a service work where the legal entity or organization enjoys the copyright (except the right of authorship), shall be fifty years, expiring on December 31 of the fiftieth year after the first publication of such a work, however, any such work that has not been published within fifty years after the completion of its creation shall no longer be protected by this Law. The term of protection of the right in respect of a cinematographic work or a work created in a way similar to cinematography shall be fifty years, expiring on December 31 of the fiftieth year after the first publication of such a work, however, any such work that has not been published within fifty years after the completion of its creation shall no longer be protected by this Law.


Add: 5F, Wuhua Building, 4A Chegongzhuang Dajie, Beijing 100044, China Tel: 86-10-68003887 (ext.) Fax: 86-10-68003945 Website: http://www.ccopyright.com.cn Email: [email protected]


Not available at present. But it is available in the near future.

http://www.ccopyright.com.cn/

51



in local currency in US $ in local currency

in US $

a)Registration

300 44 300 44

b) Maintenance (renewal) 0 0 c) Others, if any - Deposit requirements, if any

No


No


“Copyright” shall include the following personal rights and property rights: (1) the right of publication, that is, the right to decide whether to male a work available to the public; (2) the right of authorship, that is, the right to claim authorship and to have the author’s name mentioned in connection with the work; (3) the right of alteration, that is, the right to alter or authorize others to alter one’s work; (4) the right of integrity, that is, the right to protect one’s work against distortion and mutilation; (5) the right of reproduction, that is, the right to produce one or more copies of the work by means of printing, Xeroxing, rubbing, sound recording, video recording, duplicating, or re-shooting, etc.; (6) the right of distribution, that is, the right to provide the public with original copies or reproduced copies of works by means of selling or donating; (7) the right of lease, that is, the right to non-gratuitously permit others to temporarily exploit a cinematographic work, a work created in a way similar to cinematography or computer software, unless the computer software is not the main object under the lease; (8) the right of exhibition, that is, the right to publicly display the original copies or reproduced copies of works of fine art and cinematographic works; (9) the right of performance, that is, the right to publicly perform works, and to publicly transmit the performance of works by various means; (10) the right of projection, that is, the right to make, by such technical equipment as projector, episcope, etc., the works of fine art, photographic works, cinematographic works and works created in a way similar to cinematography, etc. reappear publicly; (11) the right of broadcasting, that is, the right to publicly broadcast or disseminate works by wireless means, to disseminate broadcast works to the public by wired dissemination or rebroadcast, and to disseminate broadcast works to the public by audio amplifier or other similar instruments for transmission of signs, sounds or images; (12) the right of information network dissemination, that is, the right to provide the public with works by wired or wireless means, so as to make the public able to respectively obtain the works at the individually selected time and place; (13) the right of production, that is, the right to fix works on the carrier by cinematography or in a way similar to cinematography; (14) the right of adaptation, that is, the right to modify a work for the purpose of creating a new work of original creation; (15) the right of translation, that is, the right to transform the language of a work into another language; (16) the right of compilation, that is, the right to choose or edit some works

52

or fragments of works so as to form a new work; (17) other rights which shall be enjoyed by the copyright owners. A copyright owner may permit others to exercise the rights provided in Items (5) through (17) of the preceding paragraph, and may receive remuneration as agreed upon in the contract or in accordance with the relevant provisions in this Law. A copyright owner may wholly or partially transfer the rights provided in Items (5) through (17) of Paragraph 1 of this Article, and may receive remuneration as agreed upon in the contract or in accordance with the relevant provisions in this Law.

Exemptions In the following cases, a work may be exploited without the permission from, and without payment of remuneration to, the copyright owner, provided that the name of the author and the title of the work are mentioned and the other rights enjoyed by the copyright owner by virtue of this Law are not infringed upon: (1) use of a published work for the purposes of the user’s own private study, research or self-entertainment; (2) appropriate quotation from a published work in one’s own work for the purposes of introduction of, or comment on, a work, or demonstration of a point; (3) inevitable reappearance or citation of a published work in newspapers, periodicals, radio stations, television stations or other media for the purpose of reporting current events; (4) reprinting by newspapers or periodicals or other media, or broadcasting by radio stations or television stations or other media, of the current event articles on the issues of politics, economy and religion, which have been published by other newspapers, periodicals, radio stations or television stations or other media, except where the author has declared that publication or broadcasting is not permitted; (5) publication in newspapers or periodicals or other media, or broadcasting by radio stations or television stations or other media, of a speech delivered at a public assembly, except where the author has declared that publication or broadcasting is not permitted; (6) translation or reproduction, in a small quality of copies, of a published work for use by teachers or scientific researchers in classroom teaching or scientific research, provided that the translation or reproduction is not published or distributed; (7) use of a published work by a State organ within the reasonable scope for the purpose of fulfilling its official duties; (8) reproduction of a work in its collections by a library, archive, memorial hall, museum, art gallery or similar institution, for the purpose of the display or preservation of a copy of the work; (9) free of charge performance of a published work, that is, with respect to the performance, neither fees are charged from the public nor the remuneration is paid to the performers; (10) copying, drawing, photographing, or video recording of an artistic work located or on display in an outdoor public place; (11) translation of a work published by a Chinese citizen, legal entity or organization, which is created in the Han language (Chinese), into a minority nationality language for publication and distribution within the country; (12) translation of a published work into Braille and publication of the work so translated; The provisions in the preceding paragraph shall be applicable to the limitations on the rights of publishers, performers, producers of sound recordings and video recordings, radio stations and television stations. Anyone who compiles or publishes textbooks for the purpose of

53

implementing the nine-year compulsory education or State education planning may, without the permission from the copyright owner, except that the author has declared in advance that the exploitation is not permitted, compile published fragments of works, short written works or musical works, a single work of fine art, or photographic works into the textbooks, however, he shall pay the remuneration as provided, mention the name of the author and the title of the work, and shall not infringe upon other rights which the copyright owner shall enjoy in accordance with this Law. The provisions in the preceding paragraph shall be applicable to the limitations on the rights of publishers, performers, producers of sound recordings and video recordings, radio stations and television stations.


Copyright protection is automatic.

Opposition formalities Go to court


He who commits any of the following acts of infringement shall bear the civil liability for such remedies as ceasing the infringing act, eliminating the effects of the act, making a public apology or paying compensation for damages, depending on the circumstances: (1) publishing a work without the permission from the copyright owner; (2) publishing a work of joint authorship as a work created solely by oneself, without the permission from the other co-authors; (3) having his name mentioned in connection with a work created by another, in order to seek personal fame and gain, where he has not taken part in the creation of the work; (4) distorting a work created by another; (5) plagiarizing the works of others; (6) exploiting a work by means of exhibition, making cinematographic productions or a means similar to making cinematographic productions, or by means of adaptation, translation, annotation, etc. without the permission from the copyright owner, unless otherwise provided in this Law; (7) exploiting a work of another without paying the remuneration; (8) without the permission from the copyright owner or obligee related to the copyright of a cinematographic work or a work created in a way similar to cinematography, computer software, sound recordings or video recordings, leasing his work or sound recordings or video recordings, except where otherwise provided in this Law; (9) without the permission from a publisher, exploiting the format design of his published book or periodical; (10) without the permission from the performer, broadcasting or publicly transmitting his live performance or recording his performance; (11) committing other acts of infringement upon copyright and upon other rights related to copyright.

Remedies for infringement The infringer shall, when having infringed upon the copyright or the rights related to copyright, make a compensation on the basis of the obligee’s actual losses; where the actual losses are difficult to be calculated, the compensation may be made on the basis of the infringer’s illegal gains. The amount of compensation shall also include the reasonable expenses paid by the obligee for stopping the act of tort. Where the obligee’s actual losses or the infringer’s illegal gains cannot be determined, the people’s court shall, on the basis of the seriousness of the act of tort, adjudicate a compensation of 500,000 Yuan or less

54

Renewal process / procedure No


Yes. The protection of computer software is regulated by Regulations for Computer Software Protection.


No


No

Any other additional information [You are free to include any salient features of the protection system that are unique or different, which you would like to highlight.] ---

55

Trademark


Yes


Trademark Law of the People's Republic of China Adopted on August 23, 1982, revised for the first time on February 22, 1993, and revised for the second time on October 27,2001


Yes


Both as Trademarks


To apply for the registration of a trademark or the processing of other trademark matters in China, foreigners and foreign enterprises shall appoint as their agent an organization recognized by the State as having the qualifications to act as a trademark agent.


http://www.sipo.gov.cn/sipo_English/laws/relatedlaws/200204/t20020416_34755.htm


Trademarks for which registration is applied shall have distinctive characteristics and be easy to distinguish, and may not conflict with prior lawful rights obtained by any third party.

What can be registered Any visually perceptible signs, including words, figures, letters, numbers, three-dimensional signs and color combinations as well as combinations of the afore-mentioned elements, which are capable of distinguishing the goods of one natural person or one legal person or other organization from those of another may be the subject of applications for registration as a trademark.

What cannot be registered

The following signs shall not be registered as trademarks: (1) those only comprising generic names, designs or models of the goods in respect of which the trademarks are used; (2) those having direct reference to the quality, main raw materials, function, use, weight, quantity or other features of the goods in respect of which the trademarks are used; and (3) those lacking distinctive features. The signs under the preceding paragraphs may be registered as trademarks where they have acquired the distinctive features through use and become readily identifiable.

Country: China

56

Where an application is filed for registration of a three-dimensional sign as a trademark, any shape derived from the goods itself, required for obtaining the technical effect, or giving the goods substantive value, shall not be registered. Where a trademark in respect of which the application for registration is filed for use for identical or similar goods is a reproduction, imitation or translation of another person's trademark not registered in China and likely to cause confusion; it shall be rejected for registration and prohibited from use. Where a trademark in respect of which the application for registration is filed for use for non-identical or dissimilar goods is a reproduction, imitation or translation of the well-known mark of another person that has been registered in China, misleads the public and is likely to create prejudice to the interests of the well-known mark registrant, it shall be rejected for registration and prohibited from use.


For each application for the trademark registration, an Application for Trademark Registration shall be filed with the Trademark Office, accompanied by five copies of the reproduction of the trademark; if color is claimed, five copies of the color reproduction of the trademark shall be attached, so shall be a black and white design of the trademark.

Any special provisions/formalities

The reproduction of the trademark must be clear and easy to paste and shall be printed on smooth and clean durable paper or substituted by a photograph. Its length or breadth shall not be more than l0 cm and less than 5 cm each. Where an application is filed for the registration of a three-dimensional sign as a trademark, a statement shall be made in the application, and the reproduction capable of defining the three-dimensional formation be submitted. Where an application is filed for the registration of a combination of colors as a trademark, a statement shall be made in the application, and an explanation thereof Be submitted in writing. Where an application is filed for the registration of a certification mark or collective mark, a statement shall be made in the application, and the certificates of the qualification of the applicant and regulations for the administration of the use thereof be submitted. Where a trademark is in a foreign language or contains lexical elements in a foreign language, explanation of its meaning shall be made. When filing an application for the registration of a trademark, the applicant shall submit a copy of effective certificate capable of proving his identification. The name of the applicant for trademark registration shall be consistent with the certificate submitted.


A registered trademark shall be valid for a period of 10 years, calculated from the date on which the registration is approved. In the case that a registered trademark needs to continue to be used upon expiration of its period of validity, an application for extension of the registration shall be filed within six months prior to the expiration of the period. Each extension of registration shall be valid for a period of 10 years.


Trademark Office under the State Administration for Industry and Commerce Address: No.8 Sanlihedonglu, Xicheng District, Beijing Post code: 100820 Telephone: 86-10-68027820, 86-10-68052266 (voice reference) Fax: 86-10-68013623 Website: www.ctmo.gov.cn or www.saic.gov.cn

57


Yes, http://www.ctmo.gov.cn/




1000 RMB 150 1000 RMB 150

b) renewal 2000 RMB 299 2000 RMB 299 c) Others, if any Official Fees

Item in RMB in USD

Conducting normal trademark search in one class 120 18

Conducting urgent trademark search in one class 240 36

Conducting proprietorship search 500 75

Designating each extra item of goods or services

exceeding 10 items in a trademark application in on class 100 15

Filing an application for registration in each additional class 1000 150

Filing an application for registration of a collective/

certification trademark 3000 448

Claiming one convention priority 100 15

Late filing of priority documents

Filing an application for renewal in each additional class 2000 299

Late filling of renewal documents in one class 500 75

Filing an application for assignment in one class 1000 150

Filing an application for assignment in each additional

class 1000 150

Submitting a record of license contract 300 48

Applying for change or correction of name/address/other

matters 500 75

Filling an opposition 1000 150

Filing a cancellation against three years non-use mark 1000 150

Responding to an opposition or a cancellation action

Applying for re-issuance of registration certificate 1000 150

Obtaining a certified copy of an application or registration 100 15

Filing a record on customs 800 119

Filing an application for review of refusal 1500 225

Filing an application for review of cancellation 1500 225

Filing an application for review of opposition 1500 225

Filling a dispute on registered trademark 1500

225

58


No


Any trademark for which registration is applied that conforms to the relevant provisions of this Law shall be preliminarily approved by the Trademark Office, and shall be published. Anybody may file an opposition to a preliminarily approved trademark within three months of the date of publishing. If no opposition is filed before the expiration of the gazette period, approval of the registration shall be granted, a trademark registration certificate shall be issued and the trademark shall be published. Length of release of Certificate (approx.):2.5years from the date of filing


Exclusive Right to Use a Registered trademark Once a trademark is approved and registered, the trademark registrant is entitled to the exclusive rights to use the trademark, which includes: 1.Right to use the trademark: the trademark registrant is entitled to use the trademark in respect of the goods and service approved and use it in relevant business. 2. Exclusive right: the trademark registrant enjoys the exclusive right to use the registered trademark, no one else shall use identical or similar trademarks in respect of identical or similar goods and services. 3. Right to license; the trademark registrant is entitled to authorize other to use the registered trademark by signing a license contract in accordance with the law. 4. Restraining Power: the trademark registrant is entitled to prohibit any one from using identical or similar trademarks in respect of identical or similar goods and services without permission. 5. Right of mortgage: the trademark registrant is entitled to set a mortgage with the registered trademark in business. 6. Right to invest: The trademark registrant has the right to regard its registered trademark as the intangible assets and make the investment according to the due course of law according to the legal provisions 7. Right of assignment: the trademark registrant is entitled to assign the registered trademark to any one else in accordance with law, either paid or unpaid. 8. Heirdom: The registered trademark can be inherited by its rightful heir according to the order of inheritance as the incorporeal property.


If, within six months of the date on which an applicant for trademark registration first applies for registration of his trademark in a foreign country, the applicant applies for registration of the same trademark for the same goods in China, he shall be entitled to a right of priority pursuant to an agreement entered into between, or an international treaty jointly acceded to by, the applicant's home country and China, or pursuant to the principle of reciprocal recognition of the right of priority. If the applicant claims a right of priority pursuant to the preceding

59

paragraph, he shall submit a written declaration When submitting his application for trademark registration and, within three months, submit copies of the application documents he submitted when he first applied for registration of the trademark. If the applicant fails to submit a written declaration or fails to submit, within the time limit, copies of the application documents for registration of the trademark, he shall be deemed not to claim a right of priority.

Renewal process / procedure The period of validity of a registered trademark shall be ten years, counted from the date of approval of the registration. Where the trademark registrant intends to continue to use the registered trademark beyond the expiration of the period of validity, an application for renewal of the registration shall be made within six months before the said expiration. Where no application therefore has been filed within the said period, a grace period of six months may be allowed, yet extra fees shall be charged for the delay of renewal. If no application has been filed at the expiration the grace period, the registered trademark shall be cancelled. The period of validity of each renewal of registration shaIl be ten years

Opposition formalities Where an opposition is filed to a trademark which, after examination, has been preliminarily approved and published by the Trademark Office, the opponent shall submit the Application for Trademark Opposition in duplicate to the Trademark Office. The Application for Trademark Opposition shall indicate the issue number of the Trademark Gazette on which the opposed trademark is published, and the number of preliminary approval of the opposed trademark. The Application for Trademark Opposition shall contain the specific requests and facts and grounds, with relevant proofs and certificates attached. The opposition period includes three months from the date of the publication, any person may, within this period, file an opposition against the trademark that has, after examination, been preliminarily approved. Where any party concerned is dissatisfied with the Trademark Office’s decision of refusal of the registration application, decision of opposition and decision of cancellation, he or it may apply for a review to the Trademark Review and Adjudication Board. Where any party concerned considers a registered trademark to be improperly registered, he or it may apply for cancellation of the trademark to the Trademark Review and Adjudication Board. Where any party concerned is dissatisfied with the decision of the Trademark Review and Adjudication Board, he or it may institute legal administrative proceedings with Beijing No. 1 Intermediate People's Court.


No


Any of the following acts shall be an infringement of the exclusive right to use a registered trademark: 1. To use a trademark that is identical with or similar to a registered trademark in respect of the identical or similar goods without authorization from the trademark registrant; 2. To sell goods knowingly which contain a counterfeit trademark; 3. To counterfeit, or to make, without authorization,

60

representations of a registered trademark of another person, or to sell such representations of a registered trademark as were counterfeited, or made without authorization; 4. To replace, without the consent of the trademark registrant, its or his registered trademark and market again the goods bearing the replaced trademark; 5. To use any signs which are identical or similar to another person’s registered trademark as the name of the goods or decoration of the goods on the same or similar goods, thus misleading the public; 6. To intentionally provide facilities such as storage, transport, mailing, concealing, etc. for the purpose of infringing another person’s exclusive right to use a registered trademark

Remedies for infringement Protection of the exclusive right to use a registered trademark can be achieved through both administrative means and judicial means. Where any party has committed any of such acts to infringe the exclusive right to use a registered trademark, the interested party can complain to local Administrations for Industry and Commerce at or above county level, requiring the administrations to investigate and handle the cases. The administrative authority for industry and commerce has the power to make an administrative decision to the cases which are not serious enough to constitute a crime, where the case is so serious as to constitute a crime; it shall be transferred to the judicial authority for handling. Where any interested party is dissatisfied with decision on handling the matter, it or he may, within fifteen days from the date of receipt of the notice, institute legal proceedings in the People's Court according to the Administrative Procedure Law of the People's Republic of China. If there have been instituted no legal proceedings or made on performance of the decision at the expiration of the said period, the administrative authority for industry and commerce shall request the People's Court for compulsory execution thereof. The interested party may also institute legal proceedings in the People's Court directly, and the court will protect the legitimate rights and interests of the right owner according to the Civil Procedure Law of the People's Republic of China.


http://sbcx.saic.gov.cn/trade/index.jsp


http://www.ctmo.gov.cn/ Chinese


---

http://www.ctmo.gov.cn/

61

Designs


Yes


Patent Law of the People’s Republic of China (Designs are covered under patent law only) Adopted on March 12,1984; Amended for the first time on September 4,1992; Amended again on August 25,2000.


No


Any foreigner, foreign enterprise or other foreign organization having no habitual residence or business office in China applies for a patent, or has other patent matters to attend to, in China, it or he shall appoint a patent agency designated by the patent administration department under the State Council to act as his or its agent.


http://www.sipo.gov.cn/sipo_English/laws/lawsregulations/200203/t20020327_33872.htm


Any design for which patent right may be granted must not be identical with and similar to any design which, before the date of filing, has been publicly disclosed in publications in the country or abroad or has been publicly used in the country, and must not be in conflict with any prior right of any other person. The extent of protection of the patent right for design shall be determined by the product incorporating the patented design as shown in the drawings or photographs.


Any new design of the shape, the pattern or their combination, or the combination of the color with shape or pattern, of a product, which creates an aesthetic feeling and is fit for industrial application.


Any design is identical with and similar to any design which, before the date of filing, has been publicly disclosed in publications in the country or abroad or has been publicly used in the country, and in conflict with any prior right of any other person.

Country: China

62


A request, drawings or photographs of the design shall be submitted, and the product incorporating the design and the class to which that product belongs shall be indicated.


The size of drawings or photographs of a design submitted shall not be smaller than 3cm x 8cm, nor larger than l5cm x 22cm. Where an application for a patent for design seeking concurrent protection of colors is filed, a drawing or photograph in color shall be submitted in two copies. The applicant shall, in respect of the subject matter of the product incorporating the design which is in need of protection, submit the relevant views and stereoscopic drawings or photographs, so as to clearly show the subject matter for which protection is sought. Where an application for a patent for design is filed, a brief explanation of the design shall, when necessary, be made. The brief explanation of the design shall include the essential portion of the design, the colors for which protection is sought and the omission of the view of the product incorporating the design. The brief explanation shall not contain any commercial advertising and shall not be used to indicate the function of the product. Where the authority deems necessary, it may require the applicant for a patent for design to submit a sample or model of the product incorporating the design. The volume of the sample or model submitted shall not exceed 30cm x 30cm x 30cm, and its weight shall not surpass l5 kilograms. Articles that are easy to get rotten or broken or articles that are dangerous shall not be submitted as sample or model.


10 years from the date of filing, renewal not possible beyond 10 years. Applicant has to pay the annual fee after its right has been granted.


State Intellectual Property Office No.6 Xitucheng Road, Haidian District Bejing, P.R.China Post code: 100088 Telephone: (86-10) 62 01 32 76 (general) (86-10) 62 08 55 77 (PCT matters) Facsimile machine: (86-10) 62 01 96 15 (general) (86-10) 62 01 94 51 (PCT matters) Website: www.sipo.gov.cn Email: [email protected]


Yes, http://www.cponline.gov.cn/




500RMB Equivalent

amount on current rate

500RMB Equivalent amount on current rate

b) Maintenance 600RMB(1-3year) 900RMB(4-5year) 1200RMB(6-8year) 2000RMB(9-10year)

Equivalent amount on current rate

600RMB(1-3year) 900RMB(4-5year) 1200RMB(6-8year) 2000RMB(9-10year)


http://www.sipo.gov.cn/

63

c) Others, if any item in RMB in USD

Filing a divisional application 500 75

Additional charge for specification including

drawings



50

100

7.5

15

Filing request for re-examination 300 48

Patent certificate fee 205 31

Filing request for invalidation 1500 225

Delayed payment of annuity or maintenance fee

within

six months

+25% surcharge

Late entering into national phase of PCT

application 1000 150

Restoring the unity of the invention for PCT

application 900 134


agency 50 7.5


inventor, applicant, and patentee 200 30

Claiming priority

Claiming single conventional priority

Additional charge for each additional priority

80

80

12

12

Providing a certified of Chinese patent

application 20 3

Filing request for extension of time limit

(for the same notice or office action) (per month)

The request for the first extension

The request for the second extension

300

2000

48

299

Restoring right 1000 150 Deposit requirements, if any

No


Approx.8 months


After the grant of the patent right for a design, no entity or individual may, without the authorization of the patentee, exploit the patent, that is, make, sell or import the product incorporating

64

its or his patented design, for production or business purposes. Other information Date of priority and requirements

Where, within six months from the date on which any applicant first filed in a foreign country an application for a patent for design, he or it files in China an application for a patent for the same subject matter, he or it may, in accordance with any agreement concluded between the said foreign country and China, or in accordance with any international treaty to which both countries are party, or on the basis of the principle of mutual recognition of the right of priority, enjoy a right of priority. Where the applicant claims priority, he or it shall pay the fee for claiming priority at the same time with the payment of the filing fee. If the fee is not paid or not paid in full within the time limit, the claim for priority shall be deemed not to have been made.

Renewal process / procedure Renewal not possible beyond 10 years


None of the following shall be deemed an infringement of the patent right: (1) Where, after the sale of a patented product that was made or imported by the patentee or with the authorization of the patentee, or of a product that was directly obtained by using the patented process, any other person uses, offers to sell or sells that product; (2) Where, before the date of filing of the application for patent, any person who has already made the identical product, used the identical process, or made necessary preparations for its making or using, continues to make or use it within the original scope only; (3) Where any foreign means of transport which temporarily passes through the territory, territorial waters or territorial airspace of China uses the patent concerned, in accordance with any agreement concluded between the country to which the foreign means of transport belongs and China, or in accordance with any international treaty to which both countries are party, or on the basis of the principle of reciprocity, for its own needs, in its devices and installations; (4) Where any person uses the patent concerned solely for the purposes of scientific research and experimentation. Any person who, for production and business purposes, uses or sells a patented product or a product that was directly obtained by using a patented process, without knowing that it was made and sold without the authorization of the patentee, shall not be liable to compensate for the damage of the patentee if he can prove that he obtains the product from a legitimate source.

Opposition formalities Where, starting from the date of the announcement of the grant of the patent right, any entity or individual considers that the grant of the said patent right is not in conformity with the relevant provisions of this Law, it or he may request the Patent Reexamination Board to declare the patent right invalid. Anyone requesting invalidation or part invalidation of a patent right shall submit a request and the necessary evidence in two copies.

65

The request for invalidation shall state in detail the grounds for filing the request, making reference to all the evidence as submitted, and indicate the piece of evidence on which each ground is based.


The exploitation of a patent , that is, make, use, offer to sell, sell or import the patented product, for production or business purposes without the authorization of the patentee.

Remedies for infringement The amount of compensation for the damage caused by the infringement of the patent right shall be assessed on the basis of the losses suffered by the patentee or the profits which the infringer has earned through the infringement. If it is difficult to determine the losses which the patentee has suffered or the profits which the infringer has earned, the amount may be assessed by reference to the appropriate multiple of the amount of the exploitation fee of that patent under contractual license.


No




http://search.sipo.gov.cn/sipo/zljs/searchflzt.jsp


In China, the State Intellectual Property Office grants three types of patents: invention, utility model and design.

66

Chapter-4: IP Systems in Costa Rica

Patent


Yes


The Patent, Utility Models and Industrial Designs and Models Law No. 6867 of 1987 with amendments made on 2000 due to the TRIPs Agreement and in November, 2008 due to the free trade agreement between Central America (including Costa Rica) and Dominican Republic with the United States of America. Patent Law Regulations of 1987.


Yes, effective 1999.

State whether your country is a member of World Trade Orgn (WTO)

Yes, effective January, 2005.


No, foreigners and locals are treated equally due to the Constitution, the law and international treaties. The law makes no difference between locals and foreigners. Any application to declaratively register a right has to be signed by the author and authenticated by a lawyer. An application for inscription can also be presented through a representative (attorney) with the respective power of attorney.


In Spanish www.pgr.co.cr/Scij/


An invention is any creation of human intellect capable of being applied on industry and fulfilling the patentability requirements. It can be a product, a machine, a tool or a process. Invention is a solution to a technical problem that can be patented if new, with inventive step and industrial applicability.

Inventions not patentable It is important to mention that Costa Rican law has two types of exclusions. The following things are not considered inventions: discoveries, scientific theories and mathematical methods; esthetic and literary works; business or economic methods, plans; combination of known products, variation of forms or use, size or materials, unless that combination complies with an inventive step. Plant varieties (which get special protection by other law). Also excluded from patenting are inventions that when commercialized are against public order, moral or human or animal health, diagnostic and surgical methods, plants, animals and the biological processes used to obtain them, and microorganisms as they are in nature.

Country: Costa Rica

67

Forms required to fill and submit The form can be downloaded from www.rnp.go.cr The law and

regulations specifically state how the application must be drafted. Parts of an application are: title, inventor/holder of the right, prior art, description, claims, drawings if applicable and an abstract. The application has to have a receipt stating payment of the application fees.

Any special provisions/formalities The application has to be signed by the applicant and authenticated by a lawyer. An application can also be presented through a representative with the respective power of attorney. An application will be accepted and a presentation date given if at least has the following information: name of applicant, description, claims and drawings.

Duration of protection (years) 20 years from date of presentation of the national application or the international application, in case of a PCT application. Special provisions to extend the period for three or five years in case of delays in the registration process. If the registration takes more than 5 years from the presentation date or 3 from the requirements examination it will be extended for the same period of the delay. For this the applicant has to ask for the extension in the next three months after the granting.


Registro de Patentes Registro de la Propiedad Industrial Registro Nacional Ministerio de Justicia Curridabat, San José, Costa Rica PH:: (506) 220-20-800 P.O.Box 523-2010 Curridabat, San José, Costa Rica www.rnp.go.cr


Not available.

Cost (approx.) Applicable to natural persons (i.e. individuals)1


in local currency

in US $ in local currency

in US $

a) Registration

$150 $500

b)Examination

$400-$600 $400-$600

c) Maintenance (renewal) $150 each year2

$500 each year

d) Others, if any -- Registration For each sheet of specification exceeding 30 For each claim in addition to 10

Application fee $150 Fractionary application $150 Opposition fee $25 Term extension $45

Application fee $500 Fractionary application $500 Opposition fee $25 Term extension $150

1 SMEs, public universities and public research centers also pay these amounts. 2 Plus 30% if paid during grace period.

http://www.rnp.go.cr/


68

Deposit requirements, if any In case of microorganisms. Costa Rica is a member of the

Budapest Treaty.


Publication is done after fulfilling the formal examination. Examination will be done after one month from the notification of the opposition or a month from the third publication. The technical opinion to fulfill the requirements examination has to be done between two and two and a half years. The whole process takes around 3-4 years.


Right to exploit the invention and right to exclude others from using the invention without authorization.


Exceptions to the rights given to the holder of a patent are the following:

• Private and non-commercial acts. • Academic, educational or research acts. • Experimental use. • The selling, offer to sell, use or import or any type of

commercialization of a patented product or a product obtained by a patented process, one it has been put in the market in any country.

• Necessary uses to do research or using the patented invention on a process to comply with any requirement to obtain a sanitary approval for the commercialization of a product after the expiration of a patent.

There are compulsory licenses in special cases: For lack of exploitation, as an anticompetitive measure, in case of dependent patents and in case of public need.


Costa Rica is a member of the Paris Convention so priority period is 12 months from the presentation of the original application. In case of PCT, PCT periods prevail. An applicant should provide date and number of any application or title given or presented in another country, referred to the application. By means of a certificate or a copy, the applicant has to inform the Registry the expiration date for any given title in the country of origin. The applicant has to provide also documents such as the title, results of any type of examination decision or process granting or denying the patent. Also has to provide information about any trial or any decision affecting that patent.

Renewal process / procedure Applicant has to renew the patent annually by paying fee.

Opposition formalities After publication of a summary of the invention anyone who feels that has something to say about the patenting of the invention can present an opposition in a period of 3 months after the third publication in the Official Gazette. The opponent can present proofs and the applicant can respond to this arguments. Opposition will be decided with the decision granting or not the patent.

69


Unauthorized uses with the limitations given by the law exceptions. There is an international exhaustion of rights.

Remedies for infringement Injunction under a specific process including border measures to stop the infringement. The court may also order that the goods which are found to be infringing shall be seized, forfeited or destroyed.


The Biodiversity Law has also some regulations on intellectual property dealing with biological materials. In case of contradiction with the patent Law it is not clear which law prevails. Infringement of any intellectual property right, including patents is regulated in another law, the Intellectual Property Rights Enforcement Law.


Not available. It is under construction under LATINPAT database www.lp.espacenet.com


No printed or electronic journals published by Patent Register. Copies of patents are available at the Patents Office by request.


Yes. There are compulsory licenses in special cases: as an Anticompetitive measure, in case of dependent patents, in case of public need

Any other additional information [You are free to include any salient features of the protection system that are unique or different, which you would like to highlight.] Costa Rican patent system is a first to file system. There is an obligation to exploit the invention in Costa Rica within a period of three years from the date of granting. Exploitation means producing or importing the invention. The Costa Rican patent system has special provisions for inventions derived from civil or labor contracts. There is also provisional protection before the grant of the patent Costa Rican patent system uses the International Classification System. The Costa Rican Patent Office uses internal and external examiners. With the presentation of the application the applicant gets a provisional protection. Publication of the application is done after the verification of the formalities. In Costa Rica a patent must be exploited meaning that the product or process has to be produced or imported. There are special provisions in case of inventions derived from civil or labor contracts.

70



Yes


The Protection of Plant Varieties Law No. 8631 of February 2008. Regulations for this law are in the drafting process.


Plant variety protection in accordance to UPOV 1991


Yes, 1991 UPOV Convention


Reciprocity. Foreigners will get same treatment as nationals if Costa Ricans receive the same treatment in their country. Application can be presented by a local representative with the respective power of attorney.


In English www.upov.int In Spanish www.pgr.go.cr/Scij

Registration formalities Types of varieties that can be protected

All genera and species.


Not applicable.

Protection criteria (DUS etc.) Novelty, distinctibility, uniformity and stability.

What cannot be protected Plant varieties that don’t fulfill the protection criteria.

Forms required to fill and submit In process of creation by the authority but application can be done also through a letter with the requirements of the law and the regulations.

Any special provisions/formalities In process of creation in the law regulations.

Duration of protection (years) Perennials 25 years. Other crops 20 years from granting.


Oficina Nacional de Semillas De la Corte Suprema, 50 metros al este, calle contravía. Ph: (506).: 2223-5922 / Fax (506) 2221-7792/ 2223-5431 P.O. Box 10309-1000 San José, Costa Rica E-mail: [email protected] / [email protected]


Not available.

Country: Costa Rica

http://www.upov.int/

71

Cost (approx.) In process of determination.



in local currency


in US $

a)Registration

-

b)Examination

-

c)DUS Test

-

d) Maintenance (renewal) - e) Others, if any -

Deposit requirements, if any In process of determination but the law says the applicant, if

asked, has to provide an amount of seed as requested by the authority.


No experience since law has just been enacted and is in the process of implementation.


To authorize the reproduction or multiplication, production, preparation for production, offer to sell, selling or any type of commercialization, export or import or possession of seed of the variety. To authorize the same acts with respect to products of the yield, when they were obtained from an unauthorized way. To authorize the use of a variety that is not clearly different from the protected variety. To authorize the repeated use of the protected variety to produce another one.

Farmers’ rights With the exception of fruit crops, ornamentals and trees, the person that saves products of the yield from its own exploitation from a protected variety doesn’t need authorization.

Exemptions to farmers, if any The exemptions are general for all persons. There is no need of authorization for private non-commercial acts, experimental and educational acts.

Research exemptions Exemption of breeder’s authorization for the use of his/her variety for research purposes, including its use in the breeding of further new varieties. However, authorization of the breeder is required when repeated use of the registered variety as a parental line is necessary for commercial production of such other newly derived variety.


Priority right will be given to any national of a country with agreement with Costa Rica to treat Costa Ricans as nationals of that country, so priority period is 12 months from the presentation of the original application.

72

Renewal process / procedure No.

Opposition formalities Opposition is contemplated in the law but is been implemented through the regulations of the law that are under creation at this moment.


Unauthorized use of a protected variety.

Remedies for infringement Injunction under a specific process including border measures to stop the infringement. The court or authority may also order that the goods which are found to be infringing shall be seized, forfeited or destroyed.


The Biodiversity Law has some provisions that can also apply to plant variety protection. Trademark Law prohibits the registration of a plant variety denomination as a trademark.


Not contemplated in this law but in the Biodiversity Law. Prior informed consent and benefit sharing mechanisms are general for any type of biodiversity access.


Public search of PVP registrations is yet to be enabled.


Not available yet because the procedures are in process of implementation


Yes. Compulsory licenses due to public interest can be granted by the Executive Branch. Details are being implemented on the regulations. Voluntary licenses of protected plant varieties have to be register at the National Seeds Office.


--

73

Copyright


Yes


The Copyright Law No. 6683, from October 14, 1982 with major amendments made in 2000 due to the entrance of Costa Rica to the World Trade Organization and recently in November 21, 2008 due to a free trade agreement between Central America (including Costa Rica) and Dominican Republic with the United States of America.


Costa Rica’s copyright laws are compliant with the international treaties in the matter. The country is a member of the Berne Convention of 1886 (as modified at Paris in 1971), the Rome Convention of 1961, the Geneva Convention of 1971, the Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS) of 1995 and the latest WIPO treaties on copyrights.


No, foreigners and locals are treated equally due to the Constitution, the law and international treaties. The law makes no difference between locals and foreigners. Any application to declaratively register a right has to be signed by the author and authenticated by a lawyer. An application for inscription can also be presented through a representative with the respective power of attorney.


In Spanish http://www.pgr.go.cr/Scij/


Original work. The expression of the ideas, the form of expression not the ideas.


Literary and artistic works including, written works, computer programs and computer databases, dramatic, musical and artistic works, cinematographic films and sound recordings. Compilations, maps.


The ideas, procedures, surgical methods, mathematical concepts per se.

Forms required to fill and submit Applicant can use form provided by the Registry but can also present application by a letter.

Any special provisions/formalities The registration is purely voluntary; the registration only helps in establishing the evidence of ownership in case of any dispute. The work is protected against any infringement even without formal registration with the copyright office.

Country: Costa Rica

74

In case of software applicant has to present the description of the program and the manuals. When work is unpublished the applicant has to provide the date and hour and the place where a deposit of the work was made, with the authenticated signature of the author. The final inscription of the right has to be signed by the author. There can be many right holders for one creation e.g. in case of sound recording there can be several right holders such as for musical recording (lyrist), setting of music (composer), singer, background music performer and producer of the company or in the case of movies.

Duration of protection (years) During lifetime of creator and 70 years after death of creator. For other type of rights the term is 70 years from the end of the year of publication, release to the public or creation of the work.


Registro Nacional de Derechos de Autor Registro Nacional Ministerio de Justicia Zapote, Costa Rica Phone: (506) 2225-3460 Fax (506) 2280-7794 E-mail: [email protected] P.O.Box 523-2010 Curridabat, SanJosé, Costa Rica. www.rnp.go.cr

Cost (approx.) in local currency (specify) in US $



in local currency


in US $

a)Registration

2500 colones Equivalent amount on current rate $6

Idem Equivalent amount on current rate

b) Maintenance (renewal) Not required -- Not required --

c) Others, if any Publication 30 000- 40 000 colones

Equivalent amount on current rate $80

Idem Equivalent amount on current rate

Deposit requirements, if any Independently from registration any physical person or legal entity responsible of the reproduction of any work by printing, magnetic, electronic, electromagnetic or any other means, has the obligation to send one copy to the public universities libraries, the National Library, National Archives and the Congress. This provision is obviously used for printed or digital works and it is a way to supply materials for these public institutions. Unfortunately not everybody complies with it although there is an economic sanction for those not doing it. Registration is a way to force entities and persons to comply with the provision. In case of an artistic, unique work the deposit will be made through a relation of the characteristics of the work and the respective pictures.


Not available presently.


3 months


75


Moral rights and patrimonial (economic rights) consisting of: Moral rights: decide publication or dissemination to the public, prior indemnization, be recognized as author, oppose any modification to the work if it is going to damage him/her or his/her reputation, retrieve the work from circulation, prior indemnization. Economic rights: graphic edition, reproduction, translation, adaptation and inclusion of the work in phonogram, videogram, movies and other audiovisual works, communication to the public by several means, distribution, import, any other form of use.

Exemptions There are many exceptions in the law, for example: news and informative purposes, indicating the source.

• Reproduction of an article discussing updated economic, political or religious issues, when it is not expressly prohibited, indicating the source.

• Speeches and legal oral statements in trials. • Bibliographic references • Pictures of public monuments or public artistic works with

no lucrative purpose. • Phonograms and broadcast in stores selling electronics, • Private and familiar or educational use musical or

theatrical works, indicating source. • Use and reproduction of works, such as compilations,

radio emissions and recordings, to be used as illustrative means for educational purposes.

• In the case of exclusive rights of artist and executioners, phonogram producers and radio stations there are some exceptions: private use. Brief fragments for informative purposes, brief use by a radio station and for its own purposes and educational and research purposes.

• The reproduction of one copy of a didactic or scientific work done with a sole personal and no lucrative purpose. Computer programs are exempted.

• Reproduction of laws and regulations. Other information Date of priority and requirements

Copyright protection is automatic from the moment the work is embodied in any means like paper, magnetic tape, diskette and any other supportive means and it has the author’s name.

Opposition formalities Costa Rican copyright law has an opposition. After the application is admitted it will be published in a local newspaper, if 30 days pass without any opposition from a third party the registration will take place. The grieved party may approach the Registry Director with a revocation or an appeal at the Tribunal Registrar Administrative. After that civil courts are available.


Infringement is not described in the law. The law states the rights and exceptions any other unauthorized use is considered infringement.

Remedies for infringement Injunction under a specific process including border measures to stop the infringement. The court may also order that the goods

76

which are found to be infringing shall be seized, forfeited or destroyed.

Renewal process / procedure Only one time registration, no renewal


Infringement of any intellectual property right, including copyright is regulated in another law, the Intellectual Property Rights Enforcement Law.


No electronic journals published by the Copyright Authority.


The Copyright Register can produce a certification of the registration. The person has to go to the office, pay a fee and ask for the certification.


The Copyright Law provides for the creation of the Copyright Register under the National Register. The head of that office is the National Copyright Registrar. There are provisions of collective copyright societies These copyright societies can be registered with the copyright office. The societies register, manage and maintain the copyright.

77



No specific legislation.


Not applicable.


Geographical indications are protected in the Trademarks Law No. 7978 from January 6, 2000 with amendments in 2008.


Foreigner or foreign organization has to have a legal representative with a power of attorney.


In Spanish www.pgr.go.cr/Scij/


Enough distinctiveness to avoid confusion in the consumer.

Grounds for refusal of registration It cannot be registered as a geographical indication one that is not enough distinctive to avoid confusion to the consumer about the geographical origin of the product, its qualities or characteristics or if it is not enough distinctive from one already registered or in process or in use. It cannot be protected as a GI one that does not comply with the law definition, one that is contrary to public order and moral or if it is common or generic.

Forms required to fill and submit Forms available at the Trademark Register. It can also be done with no form but it has to have: name of applicants, the GI, the geographic zone or territory, the products or services to be protected, qualities or characteristics given to that product.

Any special provisions/formalities The application has to be presented by a group of producers, companies fabricating or artisans from the region or territory or a public authority.

Duration of protection (years) Indefinitely but it can be modifies if the circumstances change.


Registro de la Propiedad Industrial Registro Nacional Ministerio de Justicia, Curridabat, San José, Costa Rica PH:: (506) 220-20-800 P.O.Box 523-2010 Curridabat, San José, Costa Rica www.rnp.go.cr

Country: Costa Rica

http://www.pgr.go.cr/Scij/


78


Not available


Other than natural persons (i.e. organizations)3

in local currency


in US $

a)Registration

- $50 $50

b) Maintenance (renewal) - Not applicable.

c) Others, if any - Opposition $25 Modification or correction of the application $25

Opposition $25 Modification or correction of the application $25

Deposit requirements, if any Not required.


1 year.


Exclusive right to exclude others from using similar or identical geographical indication causing confusion.


A G.I. cannot be used if it is false or even if it is true if it suggest to the public a wrong idea about the origin of the product. A GI cannot be use if it is an anticompetitive practice.


Not applicable.

Renewal process / procedure Not applicable.

Opposition formalities After publication anyone who feels that has something to say about the registration of the GI can present an opposition in a period of 2 months after the first publication in the Official Gazette. The opponent can present proofs and the applicant can respond to this arguments. Opposition will be decided with the decision granting or not the GI


Only the producers, companies fabricating or artisans authorized can use the GI Unauthorized use of the GI or similar sign causing confusion on the public.



Infringement of any intellectual property right, including GI’s is regulated in another law, the Intellectual Property Rights Enforcement Law.

3 Public institutions have no fee.

79


Not contemplated in this law but in the Biodiversity Law. Prior informed consent and benefit sharing mechanisms are general for any type of biodiversity access.


No website available. Copies can be requested at the Industrial Property Register.


No printed or electronic journals published by the authority.


Costa Rican law also provides for protection for denominations of origin. A de nomination of origin is a geographical denomination, designation, expression, image or sign from a country or region, useful to designate a product as original from a territory of a country or region, in which the quality or characteristics are given exclusively due to that geographical environment, including the natural or human factors. A geographical indication is defined as am indication that identifies a product as original fro a territory of a country or region, when the specific quality, reputation, or other characteristics of that product is given fundamentally due to the geographic origin. It can be any signor group of signs.

80

Trademark

Basic information on acquisition of TM rights Does your country have Trademark legislation in place

Yes


Trademarks Law No. 7978 from January 6, 2000 with amendments in 2008.


No.


Goods and services can be protected through trademarks.


Foreigners and locals are treated the same due to Constitution and international agreements but foreigners have to be represented by a local representative (attorney mainly)


In Spanish www.pgr.go.cr/Scij


To avoid confusion on the public. To distinguish goods and services.

What can be registered Any sign or combination of signs capable of distinguishing the goods and services. Words, group of words, names of persons, letters, numbers, disposition of colors, figurative elements, monograms, portraits, labels, digits, emblems, lines, sounds, etc. Despite of geographical indications and denominations of origin dispositions in the law, a trademark can be a geographical name, local or foreign, if it does not cause confusion in the consumer with respect to the origin or characteristics of the products or services.

What cannot be registered • Usual forms of the product or container or shape due to the nature of the product or service.

• A shape that gives a functional or technical advantage to the product or service

• A sign or indication that in the language or commercial use is a common designation by itself.

• A sign or indication that qualifies a characteristic by itself • A color, letter or digit by itself. • Something that does not give enough distinctness. • Something against moral or public order. • An element that is an offense or ridiculouses persons, ideas,

religions or symbols. • An element that misleads the geographical origin or nature,

way of producing, qualities, quantities, etc of the product or

Country: Costa Rica

81

service. • Something identical or similar that can cause confusion with

another trademark. • Something that reproduces a national, international, institution

or organization symbol or currency without the authorization from that entity.

• Something reproducing medals, prizes, diplomas that can mislead the public, only if those prized were actually given to that product or service.

• A notorious sign from another country. • A plant variety denomination. • Not admissible trademarks due to better rights of third parties

to avoid confusion with registered or used trademarks. • Any sign affecting the name or identity of a person or

community • A sign infringing a copyright or other intellectual property right. • Sign reproducing or imitating a certification mark.

Forms required to fill and submit The form can be downloaded from www.rnp.go.cr The law and regulations specifically state how the application must be drafted.

Any special provisions/formalities When the trademark is a graphic representation applicant has to provide 10 reproductions.

Duration of protection (years) 10 years subject to indefinite renewal every 10 years


Registro de Marcas Registro de la Propiedad Industrial Registro Nacional Ministerio de Justicia Curridabat, San José, Costa Rica PH:: (506) 220-20-800 P.O.Box 523-2010 Curridabat, San José, Costa Rica www.rnp.go.cr


Not available



in local currency


in US $

a)Registration

- $50 per class $50 per class

b) Maintenance (renewal)4 - $50 per class $50 per class

d) Others, if any - Change of right holder, inscription of license, cancellation, change of name $25 Opposition $25

Change of right holder, inscription of license, cancellation, change of name $25 Opposition $25

4 Renovación



82

Correction or modification of an application $25 Application division $25 Application for cancellation $25

Correction or modification of an application $25 Application division $25 Application for cancellation $25

Deposit requirements, if any Not required.


1 year.


Exclusive rights to exclude others from using similar or identical signs when commercializing similar, identical or related products or services as the ones protected by the registered trademark causing confusion in the public.


Costa Rica is a member of the Paris Convention so priority period is 6 months from the presentation of the original application

Renewal process / procedure To submit a petition with similar requisites as the application.

Opposition formalities After publication anyone who feels that has something to say about the registration of a trademark can present an opposition in a period of 2 months after the first publication in the Official Gazette. The opponent can present proofs and the applicant can respond to this arguments. Opposition will be decided with the decision granting or not the trademark.


Infringement of any intellectual property right, including trademarks is regulated in another law, the Intellectual Property Rights Enforcement Law.


Unauthorized use of the registered trademark or a similar sign capable of causing confusion in the public.



There is a database of registered trademarks that anyone can access at the Registry. Copies of records are available directly from the Trademarks Registry.

83


• A registered trademark in Costa Rica has to be used within a period of 5 years from the registration. • A trademark can be cancelled if it becomes a generic term. • There is an international exhaustion of rights. • There are some limitations to the rights conferred to the trademark holder, for example, using the

name or the address of the commercial offices.

84

Designs

Basic information on acquisition of Designs protection Does your country have Designs protection in place?

Yes


There is no specific law.


Designs are regulated under the Patent, Utility Models an Industrial Designs and Models Law No. 6867 of 1987.


Foreigners and locals are treated the same due to Constitution and international agreements but foreigners have to be represented by a local representative (lawyer mainly)


www.pgr.go.cr/Scij


Novelty and originality.


Only aesthetic forms. Industrial design is any group of lines or colors.


This type of protection is not intended for functional elements or technical characteristics. Designs against public order.

Forms required to fill and submit There are no specific forms to file a design but the law and regulations state how the application has to be drafted.

Any special provisions/formalities Applicant has to present 5 graphic representations or pictures of the designs. The application has to indicate to what type of products the design is intended to be used, a brief description of the design and if possible a product in which it is used or to be used. The application has to be signed by the applicant and authenticated by a lawyer. An application can also be presented through a representative with the respective power of attorney

Duration of protection (years) 10 years


Registro de Patentes Registro de la Propiedad Industrial Registro Nacional Ministerio de Justicia Curridabat, San José, Costa Rica PH:: (506) 220-20-800 P.O.Box 523-2010 Curridabat, San José, Costa Rica www.rnp.go.cr

Country: Costa Rica

http://www.pgr.go.cr/Scij


85


Not available.



in local currency


in US $

a)Registration

- $75 $75

b) Maintenance (renewal) Not required. c) Others, if any Opposition

$30

Deposit requirements, if any Not applicable.


1-2 years.


To exclude others from using the protected design or a similar one in any product with commercial aim without authorization.


Costa Rica is a member of the Paris Convention so priority period is 12 months from the presentation of the original application. An applicant should provide date and number of any application or title given or presented in another country, referred to the application. By means of a certificate or a copy, the applicant has to inform the Registry the expiration date for any given title in the country of origin. The applicant has to provide also documents such as the title, results of any type of examination decision or process granting or denying the design. Also has to provide information about any trial or any decision affecting that design.

Exceptions on Design (i.e. acts not constituting infringement)

Exceptions to the rights given to the holder of a design are the following:

• Private and non-commercial acts. • Academic, educational or research acts. • Experimental use.

Opposition formalities After publication of the design anyone who feels that has

something to say about the protection of the design can present an opposition in a period of 3 months after the third publication in the Official Gazette. The opponent can present proofs and the applicant can respond to this arguments. Opposition will be decided with the decision granting or not the design.


Unauthorized uses with the limitations given by the law exceptions.

Remedies for infringement Injunction under a specific process including border measures to stop the infringement. The court may also order that the goods which are found to be infringing shall be seized, forfeited or destroyed

86


Designs can also be protected under copyrights.

Source for publication of designs Designs are published in the Official Gazette.


Available at the Industrial Property Office.


---

87

Chapter-5: IP Systems in India

Patent


Yes.


The Patents Act, 1970, in view of TRIPs obligations, it has been amended three times i.e. 1999, 2002 and latest in 2005 by Patents (Amendment) Act 2005.


Yes.


Yes, India is one of the founder members of WTO effective 1 Jan 1995.


Applications made by foreigners/foreign organizations should furnish an address in India for all procedural aspects. This will not be applicable, if application is received under PCT.


ipindia.nic.in/ipr/patent/patents.htm


Novelty (defined with originality and prior art search), non-obviousness (defined with inventive step) and industrial application (defined with utility).

Inventions not patentable Inventions which are frivolous contrary to natural laws, also which causes serious prejudice to human, animal or plant life or health or to the environment. Mere discoveries of any living/non-living things or a scientific principle or the formulation of an abstract theory. Mere discovery of a new form of a known substance which does not result in the enhancement of the known efficacy or mere discovery of any new property or new use for a known substance or mere use of a known process, machine or apparatus. A substance obtained by a mere admixture, mere arrangement or re-arrangement of known devices each functioning independently. A mathematical or business method or a computer program per se or algorithms. A method of agriculture or horticulture.

Country: India

88

Any process for the medicinal, surgical, curative, prophylactic or other treatment of human beings or any process for a similar treatment of animals. Plants and animals other than microorganisms but including seeds, varieties and species and essentially biological processes for production or propagation of plants and animals. Any invention related to atomic energy and defense

Forms required to fill and submit Form 1 – Application form in duplicate Form 2 – Provisional or complete specification in duplicate. If the

provisional specification is filed, it must be followed by the complete specification within 12 months.

Form 3 – Information and assignment Power of Attorney – If filed through Patent Agent

Any special provisions/formalities Applications can be submitted personally or sent by post, fax, courier or by electronic submission. If sent by fax or electronic transmission, paper copy should be submitted within one month.

Duration of protection (years) 20 years from the date of filing of the application.


The patent office is headquartered at Kolkata with branches in Chennai, New Delhi and Mumbai. Applications are required to be filed according to the territorial limits where the applicant/representative resides. The Patent Office, Intellectual Property Office Building, CP-2 Sector V, Salt Lake City, Kolkata-700091 Tel: 23671945, 1946, 1987 Fax: 91 33 23671988, Email:- [email protected] The Patent Office,Intellectual Property Office Building G.S.T. Road, Guindy, Chennai-600032 Tel: 91 44-22502081- 84/ Fax: 91 44-22502066 Email: [email protected] The Patent Office,Intellectual Property Office Building Plot No. 32, Sector 14, Dwarka, New Delhi-110075 Tel: 91 11-28031032, 28031039, 28031044, 28031053 Fax: 91 11-28031583, 28031432 Email: [email protected] Patent Office Boudhik Sampada Bhawan, S.M.Road Near Antop Hill Post Office, Antop Hill, Mumbai - 400 037 Tel: 91 22 24137701, 24141026, 24150381, 24148165, 24171457 Fax: 91 22 24130387 Email: [email protected]


124.124.220.66/on%5Fline/

Cost (approx.) [1 US$ = Rs. 45] Applicable to natural persons (i.e. individuals)


in local currency


in US $

a) Registration

Rs. 1000 $ 25 Rs. 4,000 $ 90




89

b) Examination

Rs. 2,500 $ 60 Rs. 10,000 $ 225

c) Maintenance (renewal) Ranges from Rs. 500 to 3,000 per year

Ranges from $ 15 to 70 per year

Ranges from Rs. 2,000 to 12,000 per year

Ranges from $ 50 to 270 per year

d)Others, if any -- Registration for each sheet of specification exceeding 30 For each claim in addition to 10

Rs. 100 Rs. 200

$ 3 $ 5

Rs. 400 Rs. 800

$ 9 $ 18

Deposit requirements, if any Nil


Publication – 18 months from the date of filing Examination – Request for examination can be submitted 48 months from the date of filing.


Where a patent covers a product, exclusive right to prevent others from performing, without authorization, the act of making, using, offering for sale, selling or importing the product for the above purpose. Where a patent covers a process, patentee has the exclusive right to exclude others from performing, without his authorization, the act of using that process, using and offering for sale, selling or importing for those purposes, the product obtained directly by that process in India.


Any act of making, constructing, using or selling a patented invention solely for uses reasonably related to the development and submission of information required under any law for the time being in force, in India, or in a country other than India, that regulates the manufacture, construction use or sale of any product. Experiment or research for the purpose for imparting instruction to students without permission or payment is not infringement. Furthermore, Government may either use or acquire certain patent under certain circumstances and terms or prohibit a person from using the invention. Compulsory license: if the patent is not worked to satisfy the reasonable requirements of the public at a reasonable price the controller may grant compulsory license s to any applicant to work the patent. Revocation for non-working: a patent may be revoked for non-working or where the working has not resulted in the satisfaction of reasonable requirements of the public. Invention for defense purpose: any inventions, which are relevant for defense purposes may be subject to certain secrecy provisions.


Within 12 months from the date of filing.


90

Opposition formalities The pre-grant opposition by way of representation can be filed

within 4 months after publication of the application. The post-grant opposition can be filed by any interested person within 12 months from the date of publication of the grant of patent in the Patent Office Journal.


Acts of the defendant such as making, using, selling or manufacturing a patented product without taking authorization from patentee.

Remedies for infringement The court may grant an injunction at the option of the plaintiff, either damages or an account of profits. The court may also order that the goods which are found to be infringing shall be seized, forfeited or destroyed.


No


http://ipindia.nic.in/patsea.htm


http://ipindia.nic.in/ipr/patent/patents.htm


Yes


For patent related to biological resources, providing the source of origin is a must. With respect to use of biodiversity, the Patent Act would operate in consistency with ‘The Biological Diversity Act 2002’. In the country for the protection of traditional knowledge, an arrangement of ‘Traditional Digital Knowledge Library (TKDL)’ is available; the TKDL is maintained by one of the Central Government department. Every patent examiner through out the globe has access to TKDL to determine the prior art search. The post-grant opposition is available till one year of grant of patent. India is a member of PCT, therefore application are received through other offices or WIPO also. Under PCT, the applications to be submitted to the patent office are forwarded to the ‘Designated Receiving Offices’ in the defined time fame. The Indian citizen residing in the country can not send the application directly to the receiving office; it has to go through the appropriate Indian patent office.

http://ipindia.nic.in/patsea.htm

91



Yes


The Protection of Plant Varieties and Farmers’ Rights (PPVFR) Act, 2001. Act No.53 of 2001. Implemented in 2007


Registration of a plant variety


No


Every applicant has to furnish complete address in India for all proceedings. Authorisation Form PV-1 has to be executed. Presence of local agents/representatives is a must.


www.plantauthority.gov.in/PDFile/PPV&FRAct2001.pdf


New, extant variety, farmers’ variety and essentially derived variety (EDV).


Yes. As of 2008, 14 crops are notified (black gram, bread wheat, chickpea, field pea, green gram, kidney bean, lentil, maize, pearl millet, pigeon pea, rice, sorghum, cotton and jute). For periodical updates, please refer to the PVP Authority’s website www.plantauthority.gov.in.

Protection criteria (DUS etc.) Novelty- means variety should not have been sold in India prior to one of application and abroad prior to four year for crops and six year for trees and vines of application. Distinctiveness- means clearly distinguishable (consistent and clear difference) from any other variety in common knowledge. If distinctiveness is not apparent in the hybrid but parental lines are different then a laboratory based test for distinctiveness can be considered as ‘special characteristics’, the distinctiveness must be provided on the basis of scale parameters as provided in DUS guidelines of each crop. Uniformity- means sufficiently uniform in essential characteristics, accepted variability is permitted e.g. for a self pollinated crop certain limit of ‘off types’ is permitted, uniformity will be decided on case to case basis as per type of crop and method of propagation. Stability- Means its essential characteristics remains unchanged after repeated propagation or in case of a particular cycle at the

Country: India

http://www.plantauthority.gov.in/PDFile/PPV&FRAct2001.pdf

http://www.plantauthority.gov.in/

92

end of each cycle. Normally if distinctiveness and uniformity is OK not much emphasis would be given for testing stability.

What cannot be protected Variety sought to be protected should not contain any terminator gene. The variety will also not been registered, if anything against under section 15(4) of the Act such as name of a geographical indication, this section contains seven other items.

Forms required to fill and submit Form I - Application form for New, Extant and Farmer’s Variety Form II – Application form for EDV PV-2 – Proof of right to file application

Any special provisions/formalities The application should contain following with the application on proper format a) Applicant should provide the passport data of the parental lines along with the geographical location in India from which the genetic material has been taken. b) A statement containing brief description of the variety bringing out novelty, its characteristics (grouping, asterisked, standard, additional, supportive evidence or special characteristics) for DUS and special test as required for registration. c) Endorsement on ‘Annexure-I’ with verification from designated authorities about contribution made by farmers, village community, institution or organisation in breeding, evolution or development of a variety and use of genetic material conserved by any tribal or rural families in its breeding. d) Every applicant shall provide a specified quantity of seeds of the variety for which registration is sought, for the purpose of conducting tests to evaluate whether seeds of such variety along with parental material conform to the standards as per regulations. e) A technical questionnaire (format available with Authority) in support of distinctiveness to be given along application. The Authority may also comments from the interested parties. The observations for distinctiveness to be done on the basis of statistical methods e.g. for hybrid crops COYD method of UPOV or method devised by NBPGR can be used. f) A declaration on the proper format provided by the Authority

Duration of protection (years) Trees and vines: 9 years (renewable upto 18 years) Other crops: 6 years (renewable upto 15 years)


Protection of Plant Varieties and Farmer's Rights Authority Govt. of India, Ministry of Agriculture, Department of Agriculture and Co-operation, NASC Complex, DPS Marg, Opp- Todapur Village, New Delhi-110 012, India Tel: +91-11-25848127 Fax: +91-11-25840478 Website: www.plantauthority.gov.in Email: [email protected]


No

Cost (approx.) (1 US$ = Rs. 45) Applicable to natural persons (i.e. individuals)


in local currency


in US $

a) Registration (of EDVs) Rs. 5,000 $ 112 Rs. 10,000 $ 224



93

b) Examination

-- -- -- --

c) DUS Test

Rs. 50,000 $ 1112 Rs. 50,000 $ 1112

d) Maintenance (renewal) Rs. 5,000 $ 112 Rs. 10,000 $ 224 e) Others, if any The cost of special test would be decided on the case to case basis. Authority also plans to have annual maintenance fee, which would constitute of certain fixed amount of net annual sale

-- -- --

Deposit requirements, if any Deposit minimum of 3000gms seed of candidate variety and 1500gms seed of parental line with the ‘National Gene Bank’ maintained by NBPGR, New Delhi.


After initial scrutiny of application, the Registrar shall notify the application to submit fee for conducting DUS test. The DUS testing shall be field and multi-location-based for at least two crop seasons and special laboratory-based tests depending on crops.


Exclusive right to produce, sell, market, distribute and import or export the variety

Farmers’ rights • A farmer who has bred or developed a new variety shall be entitled to registration and other protection in similar manner to a registered breeder of a variety.

• A farmer who is engaged in the conservation of genetic resources such as landraces and wild relatives of economic plants and their improvement through selection and preservation shall be entitled for recognition and reward from the National Gene Fund.

• A farmer is entitled to save, use, sow, resow, exchange, share or sell his/her farm produce including seed of a variety protected under this Act; however the farmer is not entitled to sell branded seed of a variety protected under this Act. Branded seed means any seed put in a package or any other container and labeled in a manner indicating that such seed is of a variety protected under this Act.

• A farmer is also entitled to full disclosure of the expected performance of the seeds or planting material by the plant breeder. Where these fail to perform in the manner claimed by the breeder, the farmer may claim compensation from the plant breeder.

Exemptions to farmers, if any As stated above

Research exemptions Exemption of breeder’s authorization for the use of his/her variety for research purposes, including its use in the breeding of further new varieties. However, authorization of the breeder is required when repeated use of the registered variety as a parental line is necessary for commercial production of such other newly derived variety.

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Application has to be made within 12 months in India for which application has already been made in a Convention country.

Renewal process / procedure The onus is on the breeder/applicant to renew annually upon registration. Form PV-6 is to be submitted along with required renewal fee for renewal of registration.

Opposition formalities Within 3 months of advertisement, any person(s) can make an application for opposition in Form PV-3 along with fee (Rs.1500 or US$ 34).


a right established under this Act is infringed by a person— (a) who, not being the breeder of a variety registered under this Act or a registered agent or registered licensee of that variety, sells, exports, imports or produces such variety without the permission of its breeder or within the scope of a registered licence or registered agency without permission of the registered licensee or registered agent, as the case may be; (b) who uses, sells, exports, imports or produces any other variety giving such variety, the denomination identical with or deceptively similar to the denomination of a variety registered under this Act in such manner as to cause confusion in the mind or general people in identifying such variety so registered.

Remedies for infringement Both civil and criminal remedies are simultaneously available to breeder(s) upon infringement. No suit shall be filed in a court inferior to a District Court for seeking civil remedies. For criminal remedy, FIR (First Information Report) is required to be filed in the police station under the jurisdiction where offence was committed. Breeder can claim either compensation or share in profit in addition to injunction. The court may award either compensation or imprisonment or both to the person(s) committing infringement.


The varieties notified under the Seeds Act, 1966 (Sec.5) are eligible for protection as extant variety for the period of 15 years from the date of notification under Seed Act.


For a variety registered as EDV, individuals and non-governmental organizations (NGO) can claim a share of benefits that may arise from its commercialization on behalf of any village or local community. Any individual or NGO can make a claim on behalf of a village or local community for benefit sharing on the basis of the proportion of the contribution of the original variety/gene and the commercial utility and demand of the variety. The amount of compensation as determined by the PPVFR Authority would be deposited by the breeder in the National Gene Fund. The process of soliciting claims for benefit sharing would be carried out by the Authority after the registration process of a variety is completed.


Public search of PVP registrations is yet to be enabled. Refer to www.plantauthority.gov.in for all other information.


95


www.plantauthority.gov.in


Yes


India is the first country to enact legislation of this kind, which recognized the farmers’ as well as the plant breeders’ rights. The other salient features of this Act are the rights provided to researchers and communities. For the first time in the legislative history of the nation, the farmers’ right is included in an enactment. It provides farmers a right to save seeds, replant, as well as protection against bad quality seeds provided by the seed merchants, and the right to compensation. Farmers are also protected against innocent infringement and against the terminator seed technology.

In the country under this Act, there is a provision of ‘National gene fund’, the money to this fund would come through various sources such as govt grant, benefit sharing, annual maintenance fee etc. The amount so generated would be utilized for certain purposes including conservation and community development.

Under the Act, there is a provision of two kinds of compensations. First, if community material is used without consent of the community, second, if the promised characteristics are not available from the registered variety.


96

Copyright


Yes


The Copyright Act, 1957 came into effect from January 1958. This Act has been amended five times since then, i.e., in 1983, 1984, 1992, 1994 and 1999, with the amendment of 1994 being the most substantial. Prior to the Act of 1957, the Law of Copyrights in the country was governed by the Copyright Act of 1914. This Act was essentially the extension of the British Copyright Act, 1911 to India Even the Copyright Act, 1957 borrowed extensively from the new Copyright Act of the United Kingdom of 1956. Presently some amendments are proposed which are available on website: http://copyright.gov.in/View%20Comments.pdf


The Indian Copyright Act today is compliant with most international conventions and treaties in the field of copyrights. India is a member of the Berne Convention of 1886 (as modified at Paris in 1971), the Universal Copyright Convention of 1951 and the Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS) Agreement of 1995. Though India is not a member of the Rome Convention of 1961, the Copyright Act, 1957 is fully compliant with the Rome Convention provisions.


No, as per section 40, the foreign citizens get same treatment as Indian national. The only restriction provided under section 42 to the foreign authors is in case where foreign country does not give or has not undertaken to give adequate protection to works of Indian authors.


http://copyright.gov.in/maincpract.asp The copyright handbook is available online on website: http://copyright.gov.in/handbook.htm


Original work, translation or adaptation of a work in public domain or in which copyright subsists


Literary work including computer programs and computer databases, dramatic, musical and artistic works, cinematographic films and sound recordings.


Does not protect facts, ideas, systems or methods of operation, although it may protect the way these things are expressed.

Forms required to fill and submit Application on form-IV, it can be downloaded from website. When work is unpublished and registered, and later it is published with changes, the fresh application can be given for changes on form-V

Country: India

97

Any special provisions/formalities The registration is purely voluntary; the registration only helps in establishing the evidence of ownership in case of any dispute. The work is protected against any infringement even without formal registration with the copyright office. Exact date of publication of work in India or other countries There can be many right holders for one creation e.g. in case of sound recording there can be several right holders such as for musical recording (lyrist), setting of music (composer), singer, background music performer and producer of the company.

Duration of protection (years) During lifetime of creator and 60 years after death of creator. For broadcasting rights, term of protection is 25 years.


Copyright Information Officer/ Director and Registrar Copyrights Copyright Division Department of Secondary & Higher Education Ministry of Human Resource Development B - 2/W - 3, Curzon Road Barracks Kasturba Gandhi Marg New Delhi : 110001 Phone: +91-11-23382458, 23382549 http://copyright.gov.in/mainhome.asp


Not available presently

Cost (approx.) in local currency (specify) in US $



in local currency (INR)


in US $

a) Registration

50 to 600 per work depending on type of CR


NA NA

b) Maintenance (renewal) Not required -do- NA NA

c) Others, if any 20 to 600 depending on requirement

-do- NA NA

Deposit requirements, if any Three copies of published work alongwith application. For unpublished work, two copies can be sent alongwith application, one will be retuned after stamping and one will be kept by the office, which shall be available for public examination.


Copyright does not provide any fix time but normally certificate is issued within 3-6 months.


Owner enjoys certain exclusive economic rights such as to reproduce, publish, adapt, translate and to communicate or perform in public. The owner can also assign, license or bequeath the copyright to another party it he/she wishes so.

98

Exemptions 1. Exemptions for ‘fair use’ and ‘fair deal’ under section 52(19). For example private study, performance by an amateur club or society if the performance is given to a non-paying audience and fair use for research, criticism, review and news reporting in case of literary work, making sound recording under certain conditions, and keeping back up files of computer program/software as a safety arrangement in case of any kind of damage. If alleged infringer proves that he was not aware of existing prior work and he has not done infringement act knowingly; the onus is shifted on plaintiff to prove otherwise. 2. Hundred percent copying permitted in certain situations e.g. teacher and pupil in course of instruction and questions to answer in examination. 3. Curb on licenses in certain situation. Issuing compulsory licenses under section 30 for Indian works withheld from public and unpublished Indian works (publish and translation).


Copyright protection is automatic from the moment the work is embodied in some medium like ROM, magnetic tape, diskette or paper and copyright notice is attached to the creation having symbol ‘©’, year of creation and copyright owner’s name.

Opposition formalities There is no system of formal examination, publication and opposition. The grieved party may approach ‘Copyright Board’ within three months of decision by the Registrar copyright. The party affected with the decision of copyright board can approach High Court.


Substantial copying of a work means verbatim, resemblance or as determined on the basis of careful examination constitutes infringement. Commercial use, public display, import, hire or sell without license from the right holder or in violation of agreement also constitute infringement. Making infringing copies for sale and distributing infringing copies for the purpose of trade also infringement action.



Relation with Trademark Act 1999. In case any artistic work is used or capable of being used in relation to any goods than under section 45 (1) a ‘search certificate’ from Trademark Registry should be obtained and enclosed with the application.


No printed or electronic journal available


The extract of copyright register index can be obtained by applying and paying fee of Rs 20/- under section 47.

99


Section 11 of the Copyright Act requires the Central Government to constitute a Copyright Board headed by a Chairman with not less than two and not more than 14 other members. Registrar of Copyrights is to be Secretary of the Copyright Board. There are provisions of collective copyright society under section 33; these copyright societies can be registered with the copyright office. The societies register, manage and maintain the copyright. For enforcement of the rights, there is a provision of copyright enforcement cells with the police department of all the states in the country. At present 23 states out of 28 have these enforcement cells. The offence under the law is cognizable (no warrant required).

100



Yes, till October 2008, 99 products have been registered under the legislative Act.


The Geographical Indications of Goods (Registration and Protection) Act, 1999. It came into enforcement from September, 15, 2003 as governed by GI Rules 2002. Till October 2008 no amendments done or proposed.


Not Applicable


The product should have been registered as GI in their own country. Principal place of business in India or address for service, which can be of agent or attorney.


Website : http://ipindia.nic.in/girindia/ and http://www.girindia.in/


Any indication which identifies such goods as agricultural goods, natural goods or manufactured goods as originating or manufactured in the territory of a country or a region or locality of that territory, where given quality, reputation or other characteristic of such goods is essentially attributable to its geographical origin and in case of manufactured goods one of the activity of either production or of processing or preparation of goods concerned takes place in such territory, region or locality. Homonymous indications can be registered if differentiated and do not confuse or misled the public.

Grounds for refusal of registration Use of which likely to deceive or cause confusion, would be contrary to any law or disentitled to protection in a court. Comprise or contain scandalous or obscene matter or hurt religious sentiments of citizens of India. Anything which determined to be generic name, or which ceased to be protected in country of origin or have fallen into disuse in that country.

Forms required to fill and submit Application for GI in single or more than one class- Form GI-1 Opposition notice to good or authorized user- Form GI-2 Renewal of authorized user- Form GI-3 Renewal of good and restoration of good or authorized user- Form GI-4 For search request and permitted rectifications- Form GI-5

Country: India

101

Any special provisions/formalities Special provisions: • No action for infringement of unregistered GI. • Additional protection for notified products that may include

products other than spirit and wines also. • Homonymous indications can be registered after

differentiation of material factors from application of registered GI and particulars of protective measures adopted

Formalities: a. Application in triplicate with statement of case enclosing three certified copies of maps. The statement must include; • How GI serves to designate the goods as originating from

concerned territory having special quality, reputation or other characteristics

• Affidavit as to how the applicant claim to represent the interest of the association of persons, producers or any organization or authority established under law

• Details of characteristics and how those standards are maintained

• Details of human skill involved or uniqueness of environment or inherent characteristics

• Details of inspection structures to regulate GI • Details of applicants, if large number of producers, a collective

reference can be made b. Preliminary scrutiny by GI examiner c. Content of statement of case is assessed by a ‘Consultative Group’ of experts, they also visit the place of claim d. Thereafter examination report is issued e. Publication in GI journal

Duration of protection (years) Ten years, it can be renewed before expiry of last registration every time. There is no upper limit provided for the duration of protection, it means it can continue indefinitely with renewal every time.


Geographical Indications Registry Intellectual Property Office Building Industrial Estate, G.S.T Road Guindy, Chennai – 600 032, India Ph: +91-44 – 22502091-93 & 98 Fax : +91-44 – 22502090 E-mail: [email protected] Website : http://ipindia.nic.in/girindia/ and http://www.girindia.in/


Yes it is in progress- http://www.girindia.in/





in US $

a) Registration

5000 for goods in each class

Equal amount in currency

NA NA


102

500 for authorized user 25000 for GI additional protection

b) Maintenance (renewal) 3000 for renewal of GI before expiry 1000 renewal of authorized user


NA NA

c) Others, if any 1000 for opposition 500 for search request


NA NA



In normal case 6-12 months, but no such limit is provided under the rules.


Registered proprietor and authorized users have right to obtain relief in respect of infringement. Authorized users have exclusive right to use the GI.


Under the law, there are two parts of GI register, Part-A contains the goods and Part-B contains the names of authorized users.


Date of registration in India or any convention country. Unlike patent/trademark, there is no clause that one should apply within specified time limit of their application in any other country.

Renewal process / procedure Apply on proper form before expiry by paying fee of INR3000 or after expiry by paying fee of INR3500. The restoration of lapsed GI is also possible. Not only goods but also authorized users must also renew their registration.

Opposition formalities Opposition can be applied within three months of advertisement (publication in official GI journal) on proper form along fee.


Use of GI in such manner, which confuses or misled the public about true origin of place of product or which constitutes an act of unfair competition including passing off. Use of a GI in such a manner that falsely represents a geographical place. Use of expressions such as ‘kind, type, style, imitation’ or like expression is an infringement. No one other than authorized user or other than authorized user but who has acquired the GI lawfully can use the, it constitute infringement.


Trademark Act 1999. Chapter-V of GI Act 1999 (section 25 &26) details the provisions relating to TM and prior users, mostly the provisions are in compliance with TRIPs. There are provisions of protection to certain trademarks/ protection of GI in certain cases and also about relationship of GI with TM under certain situation.

103


No such arrangements are available in the Act.


http://124.124.220.66/gi/gisearch.aspx


http://ipindia.nic.in/girindia/


Under the Act, there are three kinds of major stakeholders

• Registered proprietor- who applies for registration, it can be association of persons, producers or any organization, which represents the interest of producers.

• Producer- any person who produces, process or package the agricultural good, any person, who exploits the natural goods. In case of handicrafts/industrial goods, any person, who manufactures and also trade or deal in such production, exploitation or manufacturing.

• Authorised user- any producer can become authorized user on registration with the GI office, it means every producer is not authorized user and also registered proprietor can not be authorized user always.

On payment basis (INR 100), the inspection of documents is possible as mentioned in section 78(1) of the Act. The copying of the document is also possible on payment of small amount of INR 10 per page. Additional protection can be given to products notified by the Central Government, it does not exclude items other than spirits and wines. The application for protection can be given by any organization that represents interests of the producers. In the country some products have been registered by the producers that are state controlled agencies also, such as ‘Mysore Silk’ has been registered by Karnataka Silk Industries Corporation (KSIC). The product is claimed to be produced exclusively by KSIC and not by so many producers in the community. This product was registered after opposition from other silk producers in the Karnataka state of the country. Similar is the case with other registered product i.e. ‘Mysore Sandal Soap’.

104

Trademark


Yes


The Trademarks Act 1999 and Trademark rules 2001, the Act came into enforcement since September 15, 2003, the Act is fully TRIPs compliant. Prior to this Act, the trademarks were governed under ‘Trade and Merchandise Marks Act 1958’; the Trademark Registry in the country was established in the year 1940 and worked in the earlier years under the purview of ‘The Trade and Mercantile Act 1856’. There is no amendment or proposal till now (October 2008).


No


Registration of both goods and services


Principal place of business in India or address for service in India, employ agents registered with the trademark office Apply on specific forms Fee at par with Indian citizen Apply in India within six month of application in his own country


Details of the Act are available at- http://ipindia.nic.in/tmr_new/default.htm


Like patent or plant variety there is no fixed criteria. The only thing is it should be distinct, and in accordance with law should not be non-registrable.

What can be registered Any name (including personal or surname of the applicant or predecessor in business or the signature of the person), which is not unusual for trade to adopt as a mark. An invented word or any arbitrary dictionary word or words, not being directly descriptive of the character or quality of the goods/service. Letters or numerals or any combination thereof. The right to proprietorship of a trade mark may be acquired by either registration under the Act or by use in relation to particular goods or service. Devices, including fancy devices or symbols; Monograms; Combination of colors or even a single color in combination with a word or device; Shape of goods or their packaging; Marks constituting a 3- dimensional sign. Sound marks when represented in conventional notation or described in words by being graphically represented.

Country: India

105

Trademark, associated mark, collective mark, certification trademark and trademark as a series can be registered for several items in various classes. The classification list of goods and services into 42 classes is available as fourth schedule- http://ipindia.nic.in/tmr_new/default.htm

What cannot be registered Marks devoid of any distinctive character; marks or indications that have become customary in the current language or in the bonafide and established practices of the trade; anything which create confusion in the minds of public; anything contrary to Indian law e.g. prohibition of registration of chemical names or name that falsely suggest connection with a living person or person who died within 20 years etc prior to application.; under rule 102 refusal of mark of any geographical indication; smell mark; unregistered but mark in use and well known mark of others; identical or marks with deceptive similarity

Forms required to fill and submit 1. Application for registration of trademark in one class: Fee INR 2500 but application on form TM-1 for Indian citizen and on TM-2 for application from convention country 2. Single application for registration of trademark in more than one class: Fee INR 2500 per class but application on form TM-51 for Indian citizen and on TM-52 for application from convention country 3. Application for collective trade mark in one class: Fee INR10000 but application on form TM-3 for Indian citizen and on TM-64 for application from convention country 4. Application for certification trade mark in one class: Fee INR10000 but application on form TM-4 for Indian citizen and on TM-65 for application from convention country 5. Application for a series trademark in one class: Fee INR2500 but application on form TM-8 for Indian citizen and on TM-37 for application from convention country. 6. For search and certificate for the purpose of copyright Act [rule 24 (3&5)]: apply on TM-60 with fee INR5000, apply on TM-72 with fee INR25000 for expedited search and certificate. 7. For refusal or invalidation of TM for geographical indications [section 25a and rule 74 (2) of GI Act]: apply on TM-73 with fee INR3000. 8. For search and certificate of a company name (under rule 32) so that trademark applied is not identical or deceptive similarity of any company registered in the country under company Act, 1956: apply on form TM-75 with fee of INR5000. 9. Expedited examination: apply on TM-63 with fee INR 12,500; the examination report shall be issued within three months. 10. Correction and amendment to the accepted application: apply on TM-16 with fee of INR500 but before registration. Details of the forms available at- http://ipindia.nic.in/tmr_new/first_schedule_forms/the_first_schedule.htm


Special provisions: For collective mark and certification trade mark and textile mark under part-II, III and IV of trademark rules 2001 respectively Formalities: 1. Application document and notices etc (Rule 13)- handwritten, typed, lithographed or printed in Hindi or English in large legible characters with deep permanent ink upon strong paper and except in case affidavits on one side only, and of size of approximate 33x20 cm with left hand margin of not less than 4cm. 2. If any deficiency is there in the application and does not satisfy the requirements of the Act, the Registrar shall issue a notice, if within one month of such notice, the remedy is not provided by the applicant, the application shall be treated as abandoned.

106

3. Expedited examination request can be submitted on form TM-63 together with declaration stating the reasons for the request. If registrar satisfied with reasons, he can issue examination report within three months, otherwise he can decline also with giving the opportunity of being heard. 4. Advertisement in the Journal after six month of application or as under rule 43. the applicant by applying on TM-58 can ask for the details of the advertisement.

Duration of protection (years) Ten years initially but continue indefinitely with renewal every year


In the country, the jurisdiction of offices is as per territorial limits of residing states. For foreign citizens, the principal place of business or address of service in India would decide the office for application as given below: Trade Marks Registry, Mumbai (Head Office) Intellectual Property Bhavan, Near Antop Hill Head Post Office, S.M. Road , Antop Hill, Mumbai 400037 Tel: 022-2410 1144, 24101177, 24148251, 24112211 Fax: 24120808, 24132295 Jurisdiction: State of Maharashtra, Madhya Pradesh and Goa

Trade Marks Registry, Delhi Intellectual Property Bhavan, Plot NO.32, Section 14, Dwarka, Delhi

Tel. 011-28082915/ 16/17

Jurisdiction: State of Jammu & Kashmir, Punjab, Haryana, Uttar Pradesh, Himachal Pradesh, Union Territory of Delhi and Chandigarh

Trade Marks Registry, Kolkata, CP-2, Sector V, 5th floor, I.P.Bhavan, Salt Lake, Kolkata-700091 Telfax. 033-23677311

Jurisdiction: State of Arunachal Pradesh, Assam, Bihar, Orissa, West Bengal, Manipur, Mizoram, Meghalaya, Sikkim , Tripura and Union Territory of Nagaland, Andamar & Nicobar Island.

Trade Marks Registry, Ahmedabad,

15/27 National Chambers, 1st floor, Ashram road, Ahmedabad-380 009.

Tel: 079-26580567

Jurisdiction: The state of Gujarat and Rajasthan and Union Territory of Damman, Diu, Dadra and Nagar Haveli

107

Trade Marks Registry, Chennai

IP building, GST Road, Guindy

Chennai-600032

Tele: 044-22502041, Fax : 044- 502042

Jurisdiction: The state of Andhra Pradesh, Kerala, Tamil Nadu, Karnataka and Union Territory of Pondicherry and Lakshadweep Island.

Contact officers in New Delhi, Mumbai, Chennai, Kolkatta and Ahmedabad are available at http://ipindia.nic.in/tmr_new/contact_person_details_10September2008.pdf


http://www.patentoffice.nic.in/ and https://124.124.220.66/etmr




in US $ in local currency in US $

a) Registration

2500 Equivalent NA NA

b) Maintenance (renewal) 5000 per class for TM 2500 for additional in series 20000 for collective mark and CTM

Equivalent NA NA

c) Others, if any Given under ‘Forms’ required

Equivalent NA NA



Expedited examination report within three months of such request made. Advertisement after six month of application. If there is no opposition, normally it takes around 12 to 18 months, though there is no fixed time limit for issuing certificate of registration.


Proprietor gets exclusive rights in relation to good/service to use trademark, license or assign. There is no action of infringement of unregistered trademark.


The use of well known mark or unregistered trademark. Where right of priority is claimed under rule 26, enclose a certificate by the registry or competent authority of that trademark office

Renewal process / procedure Renewal of registration: apply within six month of expiry on form TM-12. Restoration and renewal of registration: can be done on application on form TM-13 before one year of expiry.

108

Opposition formalities Under rule 47 a notice of opposition can be given in triplicate in form TM-5 with fee of INR2500 within three months from the date of journal made available to the public, it should contain reasonable justification. An application for extension of period of opposition can be given on form TM-44


Copyright Act: Under rule 24 (3) of trademark Act, a certificate to be issued to fulfill requirement of section 45 (1) of Indian copyright Act 1957 that the identical artistic work is not a registered TM or application for such TM is not pending with office. Geographical Indications Act: Under subsection (a) of section 25 of ‘Geographical Indications of Goods (Protection and Registration) Act 1999’ refusal or invalidation of TM


The provisions are detailed under section 29(1). A registered trademark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which is identical with or deceptively similar to the trademark in relation to goods or services in respect of which the trademark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trademark. The registered trademark is not infringed in certain cases as given under section 30 (2).


Any person under rule 24 (1) can apply on form ‘TM-54’ with fee of INR 500, the result thereof shall be communicated within 30 days. Apply on form ‘TM-71’ with fee of INR 2500 for expedited search report within seven days. Public search on payment basis access to website: http://124.124.220.66/etmr/publicSearch/searchmain.aspx


Journal available at http://www.patentoffice.nic.in/ and also at http://ipindia.nic.in/tmr_new/default.htm


The textile mark has been given special mention in the Act therefore there are several special provisions. Even for a textile mark one has to apply on specific form i.e. TM-22 for Indian citizen and form TM-45 for any foreign citizen from convention country. Trademark can be registered with or without limitations of the color or combination thereof. Under the rule 80, there is a provision of registration as registered user on application on form TM-28. As part V of trademark rules, the agents are registered with trademark office and certain category of persons are debarred from registration, the list of registered agents is published. Agents list is available at- http://ipindia.nic.in/tmr_new/TMR_Agent_List.pdf.

http://ipindia.nic.in/tmr_new/TMR_Agent_List.pdf

109

Designs


Yes


The Designs Act, 2000 [No.16 of 2000]


Not applicable


Applications made by foreigners/foreign organizations should provide an address in India for all procedural aspects. For the purpose of priority apply within six month of application in any convention country.


www.patentoffice.nic.in


Novelty and originality. There is no fixed criteria of novelty it is described in terms of search request report from Design office. Originality is described in terms of characteristics of the design.


Designs consisting of shape/configuration/pattern in two or three dimensional form may also be color or combination thereof as applied to an article (and should appeal to the eye) by an industrial process are eligible for protection.


Mode or principle, merely mechanical devices/contrivances, trademarks or property marks are not registered. Not comprising or containing scandalous or obscene matter. Not be contrary to public order or morality.

Forms required to fill and submit a) Form 1 – Application b) Representation (in quadruplicate of size 33 cm x 20.5 cm with

a suitable margin) of the article. Drawings/sketches should clearly show the features of the article from different views and state the view (e.g. front or side).

c) A statement of novelty and disclaimer (if any) in respect of mechanical action, trademark, word, letter, numerals should be endorsed on each representation sheet which should be duly signed and dated.

d) Power of Attorney (if filed by an agent) e) Priority documents (in case of convention applications)

Any special provisions/formalities 1. Search request prior to application can be made on form-6, if

Country: India

110

registration no. is known or on form-7, if registration number is not known. 2. Novelty is lost if exhibited publicly or published prior to application. Indian citizens can exhibit publicly in notified exhibitions with prior permission but in that case also the application must be filed within six months of such exhibition. 3. Prior to sale requirements- submit the exact representation/ specimen, if any deviation with the one submitted at the time of application. Mark the article ‘Registered’, otherwise, there will not be any protection against infringement despite the registration. Clerical corrections in red color can be submitted on form-14 within defined time.

Duration of protection (years) Registration is initially for a period of 10 years. Renewal is possible for further period of 5 years.


The major office for design registration is at Kolkatta, Unlike trademark, there is no designated territorial office limitation, anyone can send application to Kolkatta office. The applications may also be submitted to other patent offices situated at various places in the country. Design Office at Nizam Palace, 2nd M.S.O. Building, The Patent Office, 234/4, A.J.C. Bose Road, Kolkata - 700 020 or any of the Branch Offices of the Patent Office at Delhi, Mumbai and Chennai. The Patent Office,Intellectual Property Office Building G.S.T. Road, Guindy, Chennai-600032 Tel: 91 44-22502081- 84 Fax: 91 44-22502066 Email: [email protected] The Patent Office,Intellectual Property Office Building Plot No. 32, Sector 14, Dwarka, New Delhi-110075 Tel: 91 11-28031032, 28031039, 28031044, 28031053 Fax: 91 11-28031583, 28031432 Email: [email protected] Patent Office Boudhik Sampada Bhawan, S.M.Road Near Antop Hill Post Office, Antop Hill, Mumbai - 400 037 Tel: 91 22 24137701, 24141026, 24150381, 24148165, 24171457 Fax: 91 22 24130387 Email: [email protected]


No at present but efforts are on, please visit website of patent office India.

Cost (approx.) [1 US$ = Rs. 45] Applicable to natural persons (i.e. individuals)


in local currency


in US $

a)Registration

Rs. 1,000 $ 25 Rs. 1,000 $ 25

b) Maintenance (renewal) Rs. 2,000 $ 50 Rs. 2,000 $ 50 c) Others, if any Deposit requirements, if any Nil


One year



111


Exclusive right to use the design and prevent others from infringement.


Person who files design application in a member state of the Convention can within six months of that filing date file applications in India claiming the priority of the first application.

Renewal process / procedure Submission of Form 3 for renewal along with fee indicated above


Reproduction of layout-design for purposes of scientific evaluation, analysis, research or teaching shall not constitute infringement.

Opposition formalities Opposition can be filed within 4 months from the date of publication


Reproducing, importing, selling or distributing for commercial purposes a registered design shall constitute infringement.

Remedies for infringement Punishable with imprisonment for a term which may extend to three years or a fine which shall not be less than Rs. 50,000 and may extend to Rs. 10,00,000 or both


Some provisions to be interpreted in consistency with the Indian Copyright Act. Some of the designs e.g. plans of work of architecture are protected under copyright, similarly several of creations are protected under design act only.


www.patentoffice.nic.in


https://124.124.220.66/SearchDesign/ (S(gsmx3amzexm1znvzb1gwbi55))/designsearch.aspx


According to the Locarno Classification system the Designs Registration can be made into 32 classes. The application for design has to be filed in a particular class to obtain protection in that class, for example -- Class 1 represents ‘foodstuffs’, Class 2 represents ‘articles of clothing’, Class 3 represents ‘travel goods’ and so on. If an article design is to be registered under 3 classes, 3 separate applications need to be filed. Design is not related to technical effect; therefore one should not wait for design application, till the article is developed. Mortgagee or licensee must apply to the office on proper format with fee.

112

Chapter-6: IP Systems in Indonesia

Patent


Yes.


Patent Law No 14/2001 which replaces Patent law 13/1997


Indonesia has ratified the PCT under The Presidential Decree No 16/1997 on the Ratification of the Patent Cooperation Treaty


Indonesia is a member of WTO


No special requirements


www.dgip.go.id


Novelty, non-obviousness and industrial application.

Inventions not patentable • methods of treatment • examination • medication • theories or methods in the field of science and mathematics • living creatures • biological processes

Forms required to fill and submit Application for registration must be submitted on the prescribed forms


Duration of protection (years) 10 years for a simple patent from the filing date and not from the date of approval. 20 years for a regular patent


Directorate General of Intellectual Property Rights, Ministry of Law and Human Rights of The Republic of Indonesia Jln Daan Mogot Km 24 Tangerang 15119-Banten- Indonesia Phone: 61-21 5524992, 5525388 Fax: 62-21-5525366, 5517921 Email: [email protected]

Country: Indonesia

http://www.dgip.go.id/

113


www.dgip.go.id



in local currency (Rupiah)

in US $ in local currency (Rupiah)

in US $

a)Registration - Patent - Simple Patent

575,000 125,000

57.5 12.5

575,000 125,000

57.5 12.5

b)Examination - Patent

> Profit > Non profit - Simple Patent

2,000,000 900,000 350,000

200 90 35

2,000,000 900,000 350,000

200 90 35

c)Maintenance (renewal) - basic - additional

700,000- 5,000,000

50,000

70-500

5

700,000- 5,000,000

50,000

70-500

5d) Others, if any

Search fee: -published in Indonesia - publish in overseas

150,000

15 100

150,000

15 100

Deposit requirements, if any --


Announcement • regular patent = 6 month • simple patent = 3 month Examination: Should be filed at the latest 36 months from the filing date Granting or rejection: • at the latest 36 months from the date of receipt of the request

for substance examination Simple patent at the latest 24 months from the filing date


Licensing


• methods of treatment • examination • medication • theories or methods in the field of science and mathematics • living creatures • biological processes


--

Renewal process / procedure

--

Opposition formalities

--

114


Producing, selling, importing, renting, delivering, using, supplying for sale or delivering patented products, or products made by patented process without authorization from the patent owner or licensee

Remedies for infringement --


--


www.dgip.go.id


Patent Journal : BERITA RESMI PATEN, periodical of six months


--


--

115


Basic information on acquisition of PVP rights Does your country has PVP legislation in place [if yes, please fill in this table, or else indicate its status]

Yes.


Law No 29/2000 on Plant Variety Protection, it replaces Law no 12/1992 on Plant Utilization System


Protection on Plant Variety only

State whether your country has UPOV membership

--


No special requirements


New, unique, uniform, stable and given name


--

Protection criteria (DUS etc.) --

What cannot be protected Plant variety that contravene the prevailing laws, public order, religion or morality, health and environment

Forms required to fill and submit --


Duration of protection 20 years for crops 25 years for forest trees


Centre of Plant Variety Protection Jl Harsono RM Building E 3rd floor Telp : 62 21 7884045 and 7810380 ext 5421 Fax : 62 21 78840389 Email: [email protected] and [email protected] www.ppvt.setjen.deptan.go.id

Country: Indonesia



116

Cost (approx.) in local currency (specify) IDR (Indonesia Rupiah)

in US $

a)Registration

- Registration of PVP Rights

- Registration of Transferring PVP Rights

- Registration of Licensee agreement

- Registration of Force Licensee

150,000

150,000

1,000,000

1,000,000

15

15

100

100b)Examination

- Application of Legal Review

3,000,000

300

c)DUS Test

d) Maintenance (renewal) 1,500,000 150e)Others, if any PVP Consultant/ Registration

5,000,000

500


Licensing

Farmers’ rights -- Exemptions to farmers -- Research exemptions -- Opposition formalities -- What constitutes infringement of a protected variety in your country (e.g. Producing, selling, importing and exporting of a registered variety without the permission of its breeder, etc?)

Producing, selling, importing and exporting of a registered variety without the permission of its breeder


--

Renewal process / procedure -- Any relationship with other legislations in your country

Law No 41/1999 on Forestry/ Law No 5/1995 on Ratification on BOD/ Law No 7/1994 on Ratification on WTO


--

Website for public search of PVP registrations

www.ppvt.setjen.deptan.go.id


Centre of Plant Variety Protection Jl Harsono RM Building E 3rd floor Telp : 62 21 7884045 and 7810380 ext 5421 Fax : 62 21 78840389 Email: [email protected] and [email protected]


--



117

Copyright


Yes


The Copy Right Law, Law No 19/2002 This Law replaced The Copy Right Law No 12/1997


Indonesia has rejoined The Berne Convention, from which it withdrew from in 1958, On 7 May 1997, The government of Indonesia issued Presidential Decree no 18/1997 on the Ratification of Berne Convention.


-The creation is published the first time in Indonesia or published within 30 days from the date when it was first published outside of Indonesia - Entities whose country has a bilateral agreement with Indonesia or some other agreements related to copyrights - Entities and individuals whose country together with Indonesia has joint multilateral agreements regarding copyrights law and other related rights


www.dgip.go.id


--


A broad range of literary, artistic and musical works, including books, films, sound recordings computer programs and databases, speeches, performances, drama, dances, broadcasts, video recordings, musical compositions, paintings, drawings, sculptures, maps, architectural works, and batik


- result of open meeting of state institutions - laws and regulation - state addresses or government official speeches - court decisions and judicial orders - decisions of arbitration boards or of other similar agencies

Forms required to fill and submit Voluntary

Any special provisions/formalities -- Duration of protection (years) - Depends on the type of protection

- 50 years for most of creations, - 20 years for broadcasting works - Creator’s life plus 50 years for most creation


Directorate General of Intellectual Property Rights, Ministry of Law and Human Rights of The Republik of Indonesia

Country: Indonesia


118

Jln Daan Mogot Km 24 Tangerang 15119-Banten- Indonesia Phone: 61-21 5524992, 5525388 Fax: 62-21-5525366, 5517921 Email: [email protected]


www.dgip.go.id



in local

currency

in US $

in local

currency

in US $

a)Registration

200,000 20 200,000 20

b)Maintenance (renewal) c)Others, if any Deposit requirements, if any --


DG IP shall produce a decision at the latest 9 months computed from the date such application is received completely


--

Exemptions -- Other information Date of priority and requirements

--

Opposition formalities - What constitutes infringement of a copyrighted material

Creating, duplicating, multiplying, publishing, distributing and selling copyright works without permission

Remedies for infringement -- Renewal process / procedure -- Any relationship with other legislations in your country

--


--


--


--

119



Geographical Indications in Indonesia is included in the Trademark Law


Trademark Law No 15/2001 which replaced Trademark Law no 14/1997


Government Regulation No 51/2007 on Geographical Indication


There is no special requirements for foreigner


www.dgip.go.id


- Goods which are natural products - Goods which are agricultural products - Handmade products or certain other industrial product

Grounds for refusal of registration - contain items contrary to morality and public order - could mislead people as to the character, quality, origin,

manufacturing process or usefulness of the goods or objects concerned

- Use a geographical name that has been used as a name of a plant variety

- Have been considered generic

Forms required to fill and submit -- Any special provisions/formalities --

Duration of protection (years) The protection of GI will last as long as the goods retain the

relevant defining characteristics


Directorate General of Intellectual Property Rights, Ministry of Law and Human Rights of The Republic of Indonesia Jln Daan Mogot Km 24 Tangerang 15119-Banten- Indonesia Phone: 61-21 5524992, 5525388 Fax: 62-21-5525366, 5517921


Online submissions are welcome www.dgip.go.id

Country: Indonesia

120



in local currency


in US $

a)Registration 250,000 25 250,000 25b)Maintenance (renewal) - - c)Others, if any Application for an appeal petition of a GI

1,000,000

100

1,000,000

100

Deposit requirements, if any -- Length of processing and release of Certificate (approx.)

- The process of registration consist of 2 types of examinations: administrative examination and substantive examination

- The substantive examination can take up to 2 years from the application date

- After the examination, there is a publication stage for 3 months. - If there is an objection, there will be a substantive

reexamination for 6 months - If there is no objection a GI certificate will be issued within a

period of 30 days from the date of expiry of the announcement period


The owner of GI is entitled to: - File an indemnity claim for all losses incurred through the

unauthorized use by a third party of a registered geographical indication

- Claim for the elimination of a labels of the misused GI - File a claim for the discontinuation of the manufacture of

objects resulting from unauthorized use of GI Any exemptions / limitations / special provisions

--


--

Renewal process / procedure -- Opposition formalities -- What constitutes infringement of a registered GI product

- Use a sign that is identical to a geographic indication owned by another party for goods or services of the same kind

- Use a sign that is similar to a geographic indication owned by another party for goods or services of the same kind

- Use a sign that is protected by indication of origin and might mislead people as to the origin of the goods or services

Remedies for infringement -- Any relationship with other legislations in your country

--


--


www.dgip.go.id


--

Any other additional information ----

121

Trademark


Yes


Trademark Law No 15/2001 which replaced Trademark Law no 14/1997


No It does not. Indonesia’s Trademark Law adopts the Standard International Classification of Goods and Services


Goods and Services are registered as Trademarks


No


www.dgip.go.id


To protect the ownership of the mark

What can be registered Picture, name, word, letters, numbers, color arrangement or a combination of those elements that has distinguishing qualities and is used in the trading of goods

What cannot be registered - The mark conveys information concerning the goods or services to which the trademark related

- The mark is identical or substantially similar to another person’s registered mark for a similar kind of good or service in the same class

- The mark bears of resembles the name of a celebrity, a photograph, or the mark and name of a legal entity owned by another person that is already well-known

- A constitutes a counterfeit or resembles the name of an initial, flag, symbol or emblem of any country, national institutions or international institutions

- It constitutes or resembles any official stamp or seal sealed by any country or government institutions

- It is similar in principle or in it’s the entirety to any well-known marks in my goods are services class

Forms required to fill and submit Registration forms should be fill out

Country: Indonesia

122

Any special provisions/formalities -- Duration of protection (years) 10 (ten) years from the filing date


Directorate General of Intellectual Property Rights, Ministry of Law and Human Rights of The Republic of Indonesia Jln Daan Mogot Km 24 Tangerang 15119-Banten- Indonesia Phone: 61-21 5524992, 5525388 Fax: 62-21-5525366, 5517921 Email: [email protected]


Online submission is available www.dgip.go.id



in local currency


in US $

a)Registration

450,000 45 450,000 45

b) Maintenance (renewal) 600,000 60 600,000 60 c)Others, if any apply for an appeal petition of Mark

1,000,000 100 1,000,000 100



- Within 30 days of the filling date, DGIP will conduct substantive examination of an application that takes 9 months. During the examination it will decide whether the application should be put forward for registration.

- If the trademark application has been put forward for registration, it will enter 3 months publication periods

- if the application is put for rejection, the applicant will be notified and given 30 days to file a written argument against the rejection

- At the latest 10 days of the date of approval for registration - The announcement shall last for 3 months - If there is no objection A mark certificate will be issued within a

period of 30 days from the date of expiry of the announcement period

- If there is an objection, re-examination of the application shall be completed within a period of 2 months from the date of expiry of the announcement


Licencing/ Commercial purposes


--

Renewal process / procedure Renewal must be supported by evidence that the mark concerned is still in commercial use Renewal application may be filed at any time during 12 months period prior to the expiration date


123


The Trademark Law defines both “ geographical indications’ and Trademarks as signs that can obtain protection The Trademark Law also regulates Geographic Indications


- Use a mark that is identical to a registered mark owned by another party for goods and services of the same kind currently being produced or traded

- Use a mark that is similar to a registered mark owned by another party for goods and services of the same kind currently being produced or traded

- Trade in goods or services that one knows, or should have known, to be goods or services using a registered mark owned by another party

- Remedies for infringement --


www.dgip.go.id


Directorate General of Intellectual Property Rights, Ministry of Law and Human Rights of The Republik of Indonesia Jln Daan Mogot Km 24 Tangerang 15119-Banten- Indonesia Phone: 61-21 5524992, 5525388 Fax: 62-21-5525366, 5517921 Email: [email protected]


--

124

Designs


Yes


Law No 31/200 on Industrial Design


--


Foreigners must appoint its IP consultant in Indonesia and signing the power of attorney to the consultant


www.dgip.go.id


Protection to an industrial design may only be given to a design that is not the same as previous designs owned by other parties and that have not been published more than six months before the application date


a creation of shapes, configuration or composition of lines or colors or lines and colors or any combination of them, being three or two-dimensional, which gives an aesthetic impression and can be applied in three- or two-dimensional figures, and can be used to produce a product, goods, industrial commodities or handicraft.


Designs that contravene the prevailing laws, public order, religion or morality

Forms required to fill and submit Yes, Forms are required to fill and submit Any special provisions/formalities -- Duration of protection (years) The validity of industrial design protection is 10 years from the

application date and is not renewable.


Directorate General of Intellectual Property Rights, Ministry of Law and Human Rights of The Republic of Indonesia Jln Daan Mogot Km 24 Tangerang 15119-Banten- Indonesia Phone: 61-21 5524992, 5525388 Fax: 62-21-5525366, 5517921 Email: [email protected] ,

Country: Indonesia

125


www.dgip.go.id



in local currency


in US $

a)Registration - b)Maintenance (renewal) - c)Others, if any - Deposit requirements, if any -- Length of processing and release of Certificate (approx.)

- Announcement = 3 months - Filing objection = 3 months - A counter against the objection = 3 months - Decision whether to approve or to refuse the objection = 6

months - If there is no objection = 30 days from the date of termination

of the announcement period


Once it has been registered, the holder of the design right will have an exclusive right to implement its right and to prohibit another party, without its consent, from creating, using, selling, importing, exporting and/or distributing goods bearing a protected design.

Other information Date of priority and requirements -- Renewal process / procedure -- Limitations on Design (i.e. acts not constituting infringement)

--

Opposition formalities -- What constitutes infringement of a registered Design product

The unauthorized use, production, sale, import, export, and distribution of products using the protected design

Remedies for infringement -- Any relationship with other legislations in your country

Law No 12/1997 on Copy Rights


Directorate General of Intellectual Property Rights, Ministry of Law and Human Rights of The Republic of Indonesia Jln Daan Mogot Km 24 Tangerang 15119-Banten- Indonesia Phone: 61-21 5524992, 5525388 Fax: 62-21-5525366, 5517921


--


-


126

Chapter-7: IP Systems in Kenya

Patent


Yes.


Industrial Property Act 2001


Yes.


Yes


Foreign applicants required to appoint a local agent


www.kenyalaw.org


Novelty, inventive step and industrial applicability

Inventions not patentable • Plant varieties as provided for in the Seeds and Plant Varieties Act, but not parts thereof or products of biotechnological process.

• Inventions contrary to public order, morality, public health and safety, principles of humanity and environmental conservation.

• Discoveries, scientific theories and mathematical methods; • Schemes, rules or methods for doing business, performing

purely mental acts or playing games. • Methods for treatment of the human or animal body by surgery

or therapy, as well as diagnostic methods practiced in relation thereto, except products for use in any such methods.

• Mere presentation of information. • Public Health related methods of use or uses of any molecule

or other substances whatsoever used for the prevention or treatment of any disease which the Minister responsible for matters relating to health may designate as a serious health hazard or as a life threatening disease.

Forms required to fill and submit Form IP 3 – request

Form IP4 – Appointment of agent

Country: Kenya

127




Kenya Industrial Property Institute, Weights and Measure POPO road, South C P.O. Box 51648-00200 Nairobi Tel: +254 20 60 22 10/11 Fax: 254 20 60 63 12 Wireless: +254 20 23 86 220 E-mail: [email protected]. www.kipi.go.ke


N/A

Cost Residents Non residents in Kenya Shillings in US $

Application fee 3000 150 Examination 5000 250 Publication of application

3000 150

Grant fee 3000 150 For each claim in addition to 10

100

20

Annual fee beginning 2nd year 2000 from first to 7th year. It is 6000 on 8th year and increases gradually each year thereafter

300 from first to 8th year. It is 350 on 9th year and increases gradually each year thereafter

Deposit requirements, if any Deposit of Micro organism required. Depository institutions are 1. Kenya Medical Research Institute (KEMRI), P.O. Box 54840,00200, Nairobi, Kenya, www.kemri.org and 2. Kenya Agricultural Research Institute (KARI), P.O. Box 57811, 00200, Nairobi, Kenya www.kari.org


Publication – 18 months from the date of filing. Examination – Request for examination must be submitted within 3 years from filing date.


For a product patent • making, importing, offering for sale, selling and using the

product; • stocking such product for the purposes of offering it for sale,

selling or using the product; For a process patent • using the process • Doing any of the acts referred to in respect of a product

obtained directly by means of the process.


A patent rights do not extend to • a prior user • scientific research


http://www.kipi.go.ke/

http://www.kemri.org/

http://www.kari.org/

128

• Articles put on the market in Kenya or in any other country or imported into Kenya by consent of owner.

• use of articles on aircraft, land vehicles or vessels of other countries, which temporarily or accidentally enter the airspace, territory, or waters of Kenya.

• variants or mutants of living forms or replicable living matter from a patented original that are distinctively different hence deserving separate patent

• compulsory licenses


Within 12 months from the date of filing. Certified copy of priority documents required.


Opposition formalities No opposition provided Post grant revocation available


Acts of the defendant such as making, using, selling or manufacturing a patented product without authorization from patentee.

Remedies for infringement • injunction to prevent infringement • Damages • any other remedy provided for in law


No


None


Printed copies available in the institute at a fee Electronic journals not available


Yes


Kenya is a member of PCT and ARIPO.

129



Yes


The Seeds and Plant Varieties Act cap 326 ---Commencement Date: 1972 revised 1991


Plant variety protection (PVP) Based on UPOV 1978 no patent for plants also regulates transactions in seed.


Yes


Every applicant has to furnish complete address in Kenya for all proceedings. Application Form 1 has to be executed. Presence of local agents/representatives is a must.


www.kephis.org


New, extant variety, farmers’ variety and essentially derived variety (EDV).


Yes. All crops except algae and bacteria. For periodical updates, please refer to the PVP Authority’s website: www.kephis.org.

Protection criteria (DUS etc.) Distinctness-The applied variety should be clearly distinguishable in terms of the important characteristics (shape, quality, disease resistance etc) from any other varieties. Uniformity-All of the plants of the variety in the same propagation stage should be sufficiently similar in all the characteristics. Stability- All the characteristics should remain unchanged after repeated propagation. Novelty- The seeds and seedlings or harvested materials of the applied variety has not been transferred in Kenya earlier than one year before the date of application, or in a foreign country earlier than four years from the date of such an application (six years, in case of trees and vines). Suitable denomination-The denomination of the applied variety should not be confusing with an existing variety.

What cannot be protected Variety sought to be protected should not contain any terminator gene. The variety will also not been registered, if anything against under The seeds and plant varieties (plant Breeder’s Rights

Country: Kenya

http://www.kephis.org/

130

Regulations. 1994 and payment of prescribed fees. Also bacteria and algae are not protectable in Kenya.

Forms required to fill and submit Form I - Application for a Grant of plant breeders rights Fill the UPOV technical questionnaire

Any special provisions/formalities The application should contain following with the application on proper format a) submit a copy of the power of attorney b) submit a letter of assignment c) Every applicant shall provide a specified quantity of seeds of the variety for which registration is sought, for the purpose of conducting tests to evaluate whether seeds of such variety along with parental material conform to the standards as per regulations. d) Provide the state of protection e) A declaration on the proper format provided by the Authority f) Two colored photographs of the variety showing its salient futures

Duration of protection (years) Trees and vines ... 18 years Other crops .. 15 years


Kenya Plant Health Inspectorate Service P.O.Box 49592 Nairobi Kenya Tel: +254-02-440087/441804/448663/442340 Fax: +254-02-448940 Website: www.kephis.org Email: [email protected]


No

Cost (approx.) (1 US$ ) Applicable to natural persons (i.e. individuals)


in local currency


in US $

a)Registration

$ 200 $ 200

b)Examination

-- -- -- --

c)DUS Test

$ 600 $ 600

d) Maintenance (renewal) $ 200 $ 200 Others e) Application for extension of period of grant

100 100

f) Application for compulsory license 70 70 g) Application for protective direction 40 40 h) Certificate for protective direction 120 120 i) Application for surrender of a Grant 30 30 j) Application for opportunity to make representations

120 120

k)Grant of plant breeders rights certificate

240 240

l) Annual fees for grant 200 200 m) surcharge for late payment 60 60

Deposit requirements, if any Deposit minimum of 3000gms seed of candidate variety and

1500gms seed of parental line with the ‘Kenya plant health inspectorate service (KEPHIS) Nairobi.

131


After initial scrutiny of application, the Registrar shall notify the application to submit fee for conducting DUS test. The DUS testing shall be field and multi-location-based for at least two crop seasons and special laboratory-based tests depending on crops.

Rights conferred by the Act Major plant breeders’ rights Exclusive right to produce, condition for purpose of propagation,

sell, market, distribute and import or export the variety

Farmers’ rights • A farmer who has bred or developed a new variety shall be entitled to registration and other protection in similar manner to a registered breeder of a variety.

• A farmer who is engaged in the conservation of genetic resources such as landraces and wild relatives of economic plants and their improvement through selection and preservation shall be entitled for recognition and reward.

• A farmer is entitled to save, use, sow, resow, exchange, share but not sell the seeds as enshrined in the UPOV 1978 ACT.

• A farmer is also entitled to full disclosure of the expected performance of the seeds or planting material by the plant breeder. Where these fail to perform in the manner claimed by the breeder, the farmer may claim compensation from the plant breeder.

Exemptions to farmers, if any As stated above

Research exemptions Exemption of breeder’s authorization for the use of his/her variety

for research purposes, including its use in the breeding of further new varieties. However, authorization of the breeder is required when repeated use of the registered variety as a parental line is necessary for commercial production of such other newly derived variety.


Application has to be made within 12 months in Kenya for which application has already been made in a Convention country.

Renewal process / procedure The onus is on the breeder/applicant to renew annually upon registration. Along with required renewal fee for renewal of registration.

Opposition formalities Within 60 days of advertisement, any person(s) can make an application for opposition appropriate Form along with fee ($120).


a right established under this Act is infringed by a person— (a) who, not being the breeder of a variety registered under this Act or a registered agent or registered licensee of that variety, sells, exports, imports or produces such variety without the permission of its breeder or within the scope of a registered license or registered agency without permission of the registered licensee or registered agent, as the case may be; (b) who uses, sells, exports, imports or produces any other variety giving such variety, the denomination identical with or deceptively

132

similar to the denomination of a variety registered under this Act in such manner as to cause confusion in the mind or general people in identifying such variety so registered.

Remedies for infringement Both civil and criminal remedies are simultaneously available to breeder(s) upon infringement.


The varieties notified under the Seeds and plant varieties act gazette notices are eligible for protection for the period stated from the date of notification under the Act.


Benefit sharing mechanisms are established under a different act called the environmental management and coordination act, 1999. For a variety registered as EDV, individuals and non-governmental organizations (NGO) can claim a share of benefits that may arise from its commercialization on behalf of any village or local community. Any individual or NGO can make a claim on behalf of a village or local community for benefit sharing on the basis of the proportion of the contribution of the original variety/gene and the commercial utility and demand of the variety. The amount of compensation as determined by NEMA (National environmental management authority) would be deposited by the breeder in the National Gene Fund. The process of soliciting claims for benefit sharing would be carried out by the Authority after the registration process of a variety is completed.


www.kephis.org


www.kephis.org


Yes


Kenya recognizes breeders rights modeled along the UPOV 1978 Convention, she is also trying to incorporate farmers rights into its legislation.

133



No. There was a drafting process at one time between 2001 and 2003 but was never concluded.


N/A


Closest is Trademarks because a description of the goods associated with the trademark is required. Hence one may indicate where they are from if it adds advantage. Indicating goods are from a region wrongly is illegal because is misleading to customers hence should be avoided in description since it is not necessary.


N/A.


N/A

Country: Kenya

134

Trademark


Yes


The Trademarks Act 1956.


Yes




Appointment of a local agent is required.


www.kenyalaw.org


Mark must be distinctive.

What can be registered • the name of a company, individual or firm, represented in a special or particular manner;

• the signature of the applicant for registration or some predecessor in his business;

• an invented word or invented words; • a word or words having no direct reference to the character or

quality of the goods, and not being according to its ordinary signification a geographical name or a surname;

• any other distinctive mark

What cannot be registered As a trade mark or part of a trade mark • likely to deceive or cause confusion, • which would be disentitled to protection in a court of justice, • which would be contrary to law or morality, • Containing any scandalous design.

Mark identical to or that nearly resembles an already registered mark A word which is commonly used and accepted name of any single chemical element or single chemical compound, as distinguished from a mixture.

Forms required to fill and submit Form TM-2

Country: Kenya

http://www.kenyalaw.org/

135


Duration of protection (years) Ten years initially but continue indefinitely with renewal every 10

years


Kenya Industrial Property Instute, Weights and Measure POPO road, South C P.O. Box 51648-00200 Nairobi Tel: +254 20 60 22 10/11 Fax: 254 20 60 63 12 Wireless: +254 20 23 86 220 E-mail: [email protected]. www.kipi.go.ke


No

Cost Residents Non residents in Kenya Shillings in US $

Application fee For 1st class For each subsequent class

4000 3000

200 150

Publication of application For 1st class

For each subsequent class

3000 2500

150 100

Registration fee For 1st class


2000 1500

150 100

Renewal fee For 1st class


4,000 3,000

200 150

Restoration fee 5,000 250


Opposition within 60 days from publication




6 months and certified copy of priority documents

Renewal process / procedure • Renewal of registration: apply before expiry on form TM-10. • Restoration of lapsed registration: can be done on application on

form TM-10 within 30 days after advertisement of non-renewal. • Restoration of registration after removal from register.

Opposition formalities Filing a notice of opposition to an application on form TM 6 within 60 days from date of advertisement.



136


None


Registration gives the exclusive right to the use of the trade mark in relation to the goods or in connection with the provision of any services. The right is infringed by any person who, not being the proprietor of the trade mark or a registered user uses by way of permitted use, uses a mark identical with or so nearly resembling it as to be likely to deceive or cause confusion in the course of trade or in connection with the provision of any services in respect of which it is registered.


There is no website for doing personal searches. Any person can apply on form TM-27 for search and the result thereof will be communicated.


Printed Journals available from the institute at a fee.


• Trademark can be registered with or without limitations of the color or combination thereof. • Disclaimer of common words or elements in a mark may be required. • 3-d marks are registrable • No provision for registration of sound and smell marks. • Collective and certification marks available • The Act recognizes and makes available protection for famous trade marks

137

Designs


Yes


The Industrial Property Act 2001


Not applicable


Non resident required to appoint a local agent


www.kipi.go.ke/downloads


Design must be New


Any composition of lines or colours or any three dimensional form provided that such composition or form gives a special appearance to a product of industry or handicraft.


Anything industrial design which serves solely to obtain a technical result.

Forms required to fill and submit • Form IP 27 – Application • Representation of the article. • A statement of novelty and disclaimer (if any) • Power of Attorney (if filed by an agent) • Priority documents (in case of convention applications)

Any special provisions/formalities • Deposit of a specimen of the article embodying the industrial design.

• Where the applicant is not the creator, the request be accompanied by a statement justifying the applicant’s right to the registration of the industrial design.

Duration of protection (years) Registration is initially for a period of 5 years. Renewal is possible

for two further period of 5 years each.


Kenya Industrial Property Institute, Weights and Measure POPO road, South C , P.O. Box 51648-00200, Nairobi Tel: +254 20 60 22 10/11 / Fax: 254 20 60 63 12 Wireless: +254 20 23 86 220 E-mail: [email protected]. www.kipi.go.ke

Country: Kenya

http://www.kipi.go.ke/downloads



138


No

Cost Residents (in Kenya Shillings) Non residents (in US $) Application fee 3000 150 Publication of application 3000 150 Grant fee 1000 50 Renewal fee after 5 years 10000 500 Annual file maintenance fee beginning 2nd year

From 2000 From 300

Deposit requirements, if any Deposit of specimen Rights conferred by the Act Major rights conferred by registration

The right to preclude third parties from • reproducing the industrial design in the manufacture of a

product; • importing, offering for sale and selling a product reproducing

the protected industrial design • stocking of such a product for the purposes of offering it for

sale or selling it Other information Date of priority and requirements

6 months and certified copy of priority document required

Renewal process / procedure Submission of Form IP 32 for renewal along with fee indicated above


The rights conferred by the registration of an industrial design extend only to acts done for industrial or commercial purposes.

Opposition formalities Opposition can be filed within 60 days from the date of publication


Any act (falling within the rights conferred) performed by a person other than the owner of the industrial design without the owner’s authorization.

Remedies for infringement 1. injunction to prevent infringement 2. Damages 3. any other remedy provided for in law


None


Printed copies available in the institute at a fee Electronic journals not available


By filling Form IP 43

Any other additional information

• Rights subsisting in an industrial design may be transferred in whole or in part. • Kenya being a member of ARIPO, design registered by ARIPO by virtue of the ARIPO Protocol have

the same effect in Kenya as designs registered under the Act.

139

Chapter-8: IP Systems in Malaysia

Patent


Yes


Patents Act 1983 (Amendments 1995, 2000, 2003, 2006)


Yes


Yes


No


http://www.myipo.my/index.php?option=com_content&task=view&id=11&Itemid=6


An invention is patentable if it is new, involves an inventive step and is industrially applicable.

Inventions not patentable (a) discoveries, scientific theories and mathematical methods; (b) plant or animal varieties or essentially biological processes for the production of plants or animals, other than man-made living micro-organisms, micro-biological processes and the products of such micro-organism processes; (c) schemes, rules or methods for doing business, performing purely mental acts or playing games; (d) methods for the treatment of human or animal body by surgery or therapy, and diagnostic methods practiced on the human or animal body.


http://www.myipo.my/index.php?option=com_content&task=view&id=6&Itemid=13 PF1 Request For Grant Of Patent / PF5 Request For Substantive Examination PF17 Appointment Or Change Of Patent Agent


No person resident in Malaysia shall, without written authority granted by the Registrar, file or cause to be filed outside Malaysia an application for a patent for an invention unless an application for a patent for the same invention has been

Country: Malaysia

http://www.myipo.my/index.php?option=com_content&task=view&id=6&Itemid=13

140

filed in the Patent Registration Office not less than two months before the application outside Malaysia.


For a patent, it is 20 years with annual renewal For a utility innovation it is 10 + 5 + 5 years.


The Registrar, The Patent Registration Office, Intellectual Property Corporation of Malaysia, 32nd Floor, Menara Dayabumi, Jalan Sultan Hishamuddin, 50623 Kuala Lumpur. Tel : 603-2263 2100 Fax : 603-2274 1332 http://www.myipo.gov.my


Yes (https://pantas.myipo.gov.my/online/main/main.cfm)

Cost (approx.) Applicable to natural persons (i.e. individuals) Other than natural persons (i.e. organizations)


200.00 56 Same as left

b)Examination

500.00 142

c)Maintenance (renewal) Renewal fee for patent

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19

2ndy 3rdy 4th 5th 6th 7th 8th 9th 10th 11th 12th 13th 14th 15th 16th 17th 18th 19th 20th

200.00 250.00 300.00 350.00 400.00 450.00 500.00 550.00 600.00 650.00 700.00 800.00 900.00 1000.00 1200.00 1400.00 1600.00 1800.00 2000.00

http://www.myipo.gov.my/

141

d)Others, if any Renewal fees for utility innovation

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18

3rdy 4th 5th 6th 7th 8th 9th 10th 11th 12th 13th 14th 15th 16th 17th 18th 19th 20th

120.00 160.00 180.00 200.00 200.00 240.00 240.00 280.00 400.00 600.00 700.00 800.00 1000.00 1100.00 1200.00 1300.00 1400.00 1500.00


None


Issue of Certificate of Filing - within 7 days from the date of receipt of complete application. Issue of substantive examination report - within 4 years from the date of filing of application. Issue of Certificate of Grant of Patent - within 45 days from the date of receipt payment.


(a) to exploit the patented invention; (b) to assign or transmit the patent; and (c) to conclude license contracts.


The rights under the patent shall extend only to acts done for industrial or commercial purposes and in particular not to acts done only for scientific research. The rights under the patent shall not extend to acts done to make, use, offer to sell or sell a patented invention solely for uses reasonably related to the development and submission of information to the relevant authority which regulates the manufacture, use or sale of drugs. The rights under the patent shall not extend to the use of the patented invention on any foreign vessel, aircraft, spacecraft or land vehicle temporarily in Malaysia.


Date of filing at MyIPO

142


Annual renewal

Opposition formalities • The Court shall invalidate the patent if the person requesting the invalidation proves (a) that what is claimed as an invention in the patent is not an invention or is not patentable because it does not comply with the requirements of the Act;(b) that the description or the claim does not comply with the requirements of the Act; (c) that any drawings which are necessary for the understanding of the claimed invention have not been furnished; (d) that the right to the patent does not belong to the person to whom the patent was granted; or (e) that incomplete or incorrect information has been deliberately provided or caused to be provided to the Registrar.

• Any invalidated patent or claim or part of a claim shall be regarded as null and void from the date of the grant of the patent.


Unauthorized import, offer to sale, sell or use of patented product; or any product obtained directly by means of the patented process or to which the patented process has been applied

Remedies for infringement The Court shall award damages and shall grant an injunction to prevent further infringement and any other legal remedy.


--


https://pantas.myipo.gov.my/online/main/


The Patent Registration Office, Intellectual Property Corporation of Malaysia, 32nd Floor, Menara Dayabumi, Jalan Sultan Hishamuddin, 50623 Kuala Lumpur. Tel : 603-2263 2100 Fax : 603-2274 1332 http://www.myipo.gov.my


Yes


Patent Act (Revision) 2000. This revision of the Act is effective from 1 August 2001 and covers the following:-

• The patents protection period is revised from 15 years from the date of granting of the patents to 20 years from the date of filing of the patents.)

• To update the provisions in mandatory licenses in accordance to Article 31 of TRIPS Agreement. • To allow the parallel import of the products which have been patented after the products have been

marketed at overseas? • To limit the power to exploit the patents by the Government only during emergency and for national

interests.


143



Yes


Protection of New Plant Varieties Act 2004 The date of entry into force of the Act is 1 January 2007. The date of entry into force of the Protection of New Plant Varieties Regulations 2008 is 20 October 2008.


PVP


No


No


http://pvpbkkt.doa.gov.my/Authorized/PVPACT/index.htm


All plants excluding microorganisms which are new, distinct, uniform and stable; OR new, distinct and identifiable.


Protection is through registration and subsequent by annual notification on the status of the rights holder.

Protection criteria (DUS etc.) New, distinct, uniform and stable (DUS) OR New, distinct and identifiable (DI)

What cannot be protected • Microorganism • Plants which may affect public order or morality; or where

there is reasonable ground to believe that the cultivation, reproduction or any other use of that plant variety may produce a negative impact on the environment.

Forms required to fill and submit http://pvpbkkt.doa.gov.my/

FORM PVBT 1 -Application for registration of New Plant Variety And Grant Of Breeder’s Right FORM PVBT 2 - application for registration of New Plant Variety and grant of Breeder’s Right (discovered and developed by a farmer, local community or indigenous people)

Country: Malaysia

http://pvpbkkt.doa.gov.my/

144


Duration of protection (years) • Twenty years for a registered plant variety that is new, distinct,

uniform and stable; or • Fifteen years for a registered plant variety that is new, distinct

and identifiable.


Plant Variety Protection Registration Office, Crop Quality Control Division, Department of Agriculture Malaysia, Wisma Tani, Level 7, No. 30, Persiaran Perdana, Presint 4, 62624 Putrajaya, Malaysia. http://pvpbkkt.doa.gov.my/


No



in local currency (RM)


in US $

a)Registration Filing (per application) PVBT 1 or PVBT 2

100.00

28.00

Similar to natural persons

b)Examination Request for substantive examination. Form PVBT_3 (a) Document examination ;

500.00

142.00

c)DUS Test Form PVBT_3 (b) On-site inspection; (c) Growing test; (d) Subsequent growing test if necessary

1,500.00 2,500.00 1,000.00

425.00 708.00 283.00

d)Maintenance (renewal) 0 e)Others, if any

Request for certified copies or extracts of Register of New Plant Varieties. Form PVBT_9. Application for assignment or transmission of breeder’s right. Form PVBT_11

10.00

100.00

8.00 28.30

Deposit requirements, if any Yes. http://pvpbkkt.doa.gov.my/


Less than 2 years for crops given in priority list and may take longer for crops which are not in the priority list.


(a) producing or reproducing, (b) conditioning for purpose of propagation (c) offering for sale; (d) marketing, inclusive of selling ; (e) exporting; (/) to importing;



145

(g) stocking the material for the purposes mentioned in paragraphs

Farmers’ rights Yes

Exemptions to farmers, if any Yes, for farmers having less than a total area of 0.2 hectares.

Research exemptions Yes


On the filing date of the application.

Renewal process / procedure Annual notification with no renewal fees.

Opposition formalities • Within three months from the date of publication of an application for the registration of a new plant variety and grant of a breeder’s right,

• Notice to the Board and the applicant of opposition on of the following grounds: (a) that the person opposing the application is entitled to the breeder’s right as against the applicant; (b) that the application for the registration of the new plant variety and grant of a breeder’s right does not comply with the requirements of this Act; (c) that the application for the registration of the new plant variety and grant of a breeder’s right is contrary to public order or morality; (d) that the application for the registration of the new plant variety and grant of a breeder’s right may produce a negative impact on the environment.


The performance of any of the acts conferred to the holder of the breeder’s rights in relation to the registered plant variety without authorization of the holder.

Remedies for infringement The court may award damages and may grant an injunction to prevent further infringement and award any other legal remedy.


Patents Act 1983.


N/A






Yes



146


Extension breeder's right (a) any propagating material of the registered plant variety, harvested material of the registered plant variety and the entire or any part of a plant variety where the propagating material of that plant variety is obtained through unauthorized means from the registered plant variety; (b) plant varieties which are essentially derived from the registered plant variety, if the registered plant variety is not essentially derived from another plant variety; (c) plant varieties which are not clearly distinguishable from the registered plant variety; or (d) the production of other plant varieties which require the repeated use of the registered plant variety. (3) "unauthorized" in relation to the propagating material means it is obtained without the consent or permission of the holder. Limitations of breeder’s rights (a) any act done privately on a non-commercial basis; (b) any act done for an experimental purpose; (c) any act done for the purpose of breeding other plant varieties and any act referred to in paragraphs 30(1)(a) to (g) in respect of such other plant varieties, except where such other plant varieties have been essentially derived from the registered plant variety; (d) any act of propagation by small farmers using the harvested material of the registered plant variety planted on their own holdings; (e) any exchange of reasonable amounts of propagating materials among small farmers; and (f) the sale of farm-saved seeds in situations where a small farmer cannot make use of the farm-saved seeds on his own holding due to natural disaster or emergency or any other factor beyond the control of the small farmer, if the amount sold is not more than what is required in his own holding. The breeder's right shall not apply to any material of the registered plant variety or any material derived from that material which has been sold within Malaysia on a commercial basis by the breeder or by any other person with his consent, unless such material is used for purposes involving— (a) the further propagation of the registered plant variety; or (b) the export of the material to a country which does not protect varieties of the plant genus or species to which the variety belongs and where the exported material is not for final consumption.

147

Copyright


Yes


Copyright Act 1987; Amendments 1990, 1996,1997, 2000, 2002, 2003 Copyright (Licensing) Regulations 2000;


Yes, 1st October 1990


No


http://www.myipo.gov.my/images/stories/Copyright/copyrightact1987.pdf


Original works of expression


Literary works, musical works, artistic works, films, sound recording and broadcast


Ideas, procedures, methods of operation or mathematical concepts


Not applicable, because no registration is required.


None.


50 years from next day of publication


Malaysia Intellectual Property Corporation (MyIPO), 32 nd Floor, Dayabumi Tower, Jalan Sultan Hishamuddin 50623 Kuala Lumpur Phone No: 603-2263 2100 (Operator) 603-2274 5113 (Helpdesk) Fax No: 603-22741332 http://www.myipo.gov.my


Not applicable

Country: Malaysia


148




in US $

a)Registration

Not applicable Not applicable

Not applicable

Not applicable

b)Maintenance (renewal) Not applicable Not applicable

Not applicable

Not applicable

c)Others, if any Different fees for proceedings requiring different forms

http://www.myipo.gov.my



Not applicable


• the reproduction of the works in any form (including

photocopying, recording etc); • the performing, showing or playing to the public • the communication to the public; • the distribution of copies to the public by sale or other transfer

of ownership; and • the commercial rental to the public.

Exemptions For purposes of non-profit research, private study, criticism, review or the reporting of current events, subject to the condition that if such use is public, it is accompanied by an acknowledgement of the title of the work and its authorship, except where the work is in connection with the doing of any of such acts for the purposes of non-profit research, private study and the reporting of current events by means of a sound recording, film or broadcast;


The next day of publication of the works.

Opposition formalities • Criminal offence – file with the Domestic Trade and Consumer Affairs Ministry of Malaysia;

• Civil Offence – own cost for proving infringement.


The copyright in a work infringed when a person who, not being owner of the copyright, and without license from the owner, does or authorizes any of the following acts:-

• reproduces in any material form, performs, shows or plays

or distributes to the public, • communicates by cable or broadcast of the whole work or a

substantial part thereof either in its original or derivative form;

• imports any article into Malaysia for the purpose of trade or financial gains;

• makes for sale or hire any infringing copy; • sells, lets for hire or by way of trade, exposes or offers for

sale or hire any infringing copy;


149

• distributes infringing copies; • possesses, otherwise than for his private and domestic

use, any infringing copy; • by way of trade, exhibits in public any infringing copy; • imports into Malaysia, otherwise than for his private and

domestic use, an infringing copy; • makes or has in his possession any contrivance used or

intended to be used for the purpose of making infringing copies; or

• causes the work to be performed in public

Remedies for infringement Relief by way of damages, injunction, accounts.

Renewal process / procedure Not applicable.


Customs Act 1967 Trade Descriptions Act, 1972


http://www.myipo.gov.my/images/stories/Document/copyright.pdf http://www.myipo.gov.my Malaysia Intellectual Property Corporation (MyIPO), 32 nd Floor, Dayabumi Tower, Jalan Sultan Hishamuddin 50623 Kuala Lumpur Phone No: 603-2263 2100 (Operator) 603-2274 5113 (Helpdesk) Fax No: 603-22741332


Yes


The Malaysian Copyright Act provides for a Copyright Tribunal whose function is to grant licenses to produce and publish in the National Language a translation of a literary work written in any other language and arbitration of disputes relating to use of copyright works.

http://www.myipo.gov.my/images/stories/Document/copyright.pdf

150



Yes


Geographical Indications Act 2000 Came into operation on 15 August 2001


Geographical Indications Regulations 2001


No


http://www.myipo.my/act/GEOGRAPHICAL_INDICATIONact.pdf


Protection of geographical indications shall be given:- • regardless whether or not the geographical indication is

registered; and as • against another geographical indication which, although

literally true as to the country, territory, region or locality in which the goods originate, falsely represents to the public that the goods originate in another country, territory, region or locality.

Grounds for refusal of registration • geographical indications that do not correspond to the

meaning of "geographical indication" as defined in the Act. • geographical indications which are contrary to public order or

morality • geographical indications which are not or have ceased to be

protected in their country or territory of origin. • geographical indications which have fallen into disuse in their

country or territory of origin.

Country: Malaysia

151


Form Procedures RM

GI 1 Application of registration of a geographical indications 250.00

GI 2 Form of authorization and request to enter, alter or substitute an address for service 30.00

GI 3 Advertisement for registration 450.00 GI 4 Notice of opposition to registration 450.00 GI 5 Reply to a notice of opposition 300.00 GI 6 Certificate of Registration -

GI 7 Request for cancellation or rectification of registration of geographical indications 450.00

GI 8

Application to the Registrar to join as a party in any proceeding relating to the rectification of the Register or the cancellation of a geographical indications from the Register

100.00

GI 9 Reply by applicant for cancellation/rectification of registration of geographical indications 300.00

GI 10 Request for correction of a clerical error in an application or for permission to otherwise amend the application for registration

100.00

GI 11 Request for registrar's certificate other than certificate of registration. 100.00

GI 12 Request by registered proprietor of a registered geographical indications for entries of changes in the Register

100.00

GI 13 Request for extension of time

Per month:

50.00 100.00

GI 14 Notice to the Registrar of attendance at hearing 480.00

Any special provisions/formalities No action shall be brought against a person for the use of a trade mark which contains or consists of a geographical indication after the expiry of five years (a) from the date such use by that person or his predecessor in. title has become generally known in Malaysia; or (b) from the date of registration of the trade mark by that person under the Trade Marks Act, whichever is earlier.

Duration of protection (years) 10 years from date of filing and renewable every ten years.


Registrar Of Geographical Indication Intellectual Property Division Intellectual Property Corporation of Malaysia, Tingkat 32, Menara Dayabumi, Jalan Sultan Hishamuddin 50623 Kuala Lumpur, Phone No. : 03-2263 2100 Fax No. : 03-22741332 http://www.myipo.gov.my


No



in local currency


in US $

a) Registration

700.00 200.00 Same as left


152

b) Maintenance (renewal) 250.00 70.00 e) Others, if any - Deposit requirements, if any -- Length of processing and release of Certificate (approx.)

Not available


• Use by producers within the geographical area for trade. • Use in specified products in accordance to the quality,

reputation or characteristic registered.


• geographical indication of another country identifying wines or spirits in connection with goods or services used in Malaysia for at least ten years or in good faith before 15 April 1994.

• Where a trade mark has been applied for or registered in good faith, or where rights to a trade mark have been acquired through use in good faith

• this Act shall not prejudice the registrability or the validity of the registration of the trade mark, or the right to use the trade mark, on the basis that such a trade mark is identical with or similar to a geographical indication.

• geographical indication of any country that is identical with products of the vine with the customary name of a grape variety existing in Malaysia as of 1 January 1995.


Date of filing at MyIPO

Renewal process / procedure Renew at MyIPO

Opposition formalities • notice of opposition to Registrar within two months from the date of advertisement of an application for registration.

The notice shall be given in writing and shall include grounds of opposition.


(a ) goods in question originate in a geographical area other than the true place of origin; (b) unfair competition; (c) goods originate in another country, territory, region or locality; or (d) wines or spirits not originating in the place indicated by the geographical indication, even where the true origin of the wines or spirits is indicated or the geographical indication is used in translation or accompanied by expressions such as "kind", "type", "style" or "imitation".

Remedies for infringement The Court may grant an injunction to prevent any unlawful use of the geographical indication and award any damages and any other legal remedy or relief as it deems fit.


Trade Marks Act 1976


Guidelines on benefit sharing is being developed and not finalized yet.

153




Registrar Of Geographical Indication Intellectual Property Division Intellectual Property Corporation of Malaysia, Tingkat 32, Menara Dayabumi Jalan Sultan Hishamuddin 50623 Kuala Lumpur Phone No. : 03-2263 2100 Fax No. : 03-22741332 http://ww.myipo.gov.my

Any other additional information [You are free to include any salient features of the protection system that are unique or different, which you would like to highlight.] G.I. registered in Malaysia Applicant File No. G.I. Date of

registration Pepper Marketing Board GI03-00001 Sarawak Pepper 4.11.2003 Desa Tea Sdn.Bhd GI06-00001 Sabah Tea 10.10.2006 Spark Prestige Sdn.Bhd GI06-00002 Borneo Virgin

Coconut Oil 13.10.2006

Yit Foh Coffee Factory Sdn. Bhd.

GI06-00005 Tenom Coffee 1.11.2006

Tacara Sdn. Bhd. GI07-00004 Sabah Seaweed 9 4.2007


http://ww.myipo.gov.my/

154

Trademark


Yes


Trade Marks Act 1976 Trade Marks Act 1994(Amended) Trade Marks Act 2000(Amended) Trade Marks Regulation 1997 (Amendment 2001)


No


Both


No




Mark has become distinctive, capable of distinguishing from other marks, and continuously in use for goods or services.

What can be registered The trade mark must be capable of distinguishing goods or services with which the proprietor of the trade mark is or may be connected in the course of trade from goods or services in the case of which no such connection subsists, either generally or, where the trade mark is registered or proposed to be registered.

What cannot be registered a. if the use of which is likely to deceive or cause confusion to the public or would be contrary to law; b. if it contains or comprises any scandalous or offensive matter or would otherwise not be entitled to protection by any court of law; c. if it contains a matter which in the opinion of the Registrar is or might be prejudicial to the interest or security of the nation; d. if it is identical with or so nearly resembles a mark which is well-known in Malaysia for the same goods or services of another proprietor; e. if it is well-known and registered in Malaysia for goods or services not the same as to those in respect of which registration is applied for: f. if it contains or consists of a geographical indication with respect to goods not originating in the territory indicated, if use of the indication in the mark for such goods in Malaysia is of such a

Country: Malaysia


155

nature as to mislead the public as to the true place of origin of the goods; g. if it is a mark for wines which contains or consists of a geographical indication identifying wines, or is a mark for spirits which contains or consists of a geographical indication identifying spirits, not originating in the place indicated by the geographical indication in question.

Forms required to fill and submit Form TM5 Application for application of a mark; (https://pantas.myipo.gov.my/online/main/main.cfm#) (https://www.msctrustgate.com/) –for digital ID


Duration of protection (years) 10 years, renewable every 10 years




Yes (https://pantas.myipo.gov.my/online/main/main.cfm)



in local currency (RM)


in US $

a)Registration - Application - Granting

250.00 450.00

70.00 127.00

Same as left

b)Maintenance (renewal) 420.00 119.00 d)Others, if any - Deposit requirements, if any -


Issue search & exam report – 6 to 12 months after application date Issue the certificate of registration – within 30 days from the expiration of the gazette period


• The exclusive right to the use of the trade mark in relation to

those goods or services subject to any conditions, amendments, modifications or limitations entered in the Register.

• Where two or more persons are proprietors of registered trade marks which are identical or nearly resembling each other rights of exclusive use of either of those trade marks are not (except so far as their respective rights have been defined by the Registrar or the Court) acquired by anyone of those persons as against any other of those persons by registration of the trade mark but each of those persons have the same rights as against other persons (not being registered users) as he would if he were the sole registered proprietor.

https://pantas.myipo.gov.my/online/main/main.cfm

https://www.msctrustgate.com/


156


From date of application.

Renewal process / procedure Cannot be renewed if lapsed after 1 year.

Opposition formalities Civil suit or lodge infringement complaint under Trade Description Act 1972 at the Enforcement Department of the Ministry of Domestic Trade and Consumers Affairs.


Customs Act 1967 Trade Description Act 1972


a person who, not being the registered proprietor of the trade mark or registered user of the trade mark using by way of permitted use, uses a mark which is identical with it or so nearly resembling it as is likely to deceive or cause confusion in the course of trade in relation to goods or services in respect of which the trade mark is registered

Remedies for infringement Criminal action and Civil action






Infringement can be settled through the criminal or civil court.



157

Designs


Yes


Industrial Designs Act 1996 (Act 552) Industrial Design Regulations 1999 The Industrial Designs Act came into force on 1st September 1999


Layout-Designs of Integrated Circuits Act 2000


Use a local patent agent to register the industrial design.


http://www.myipo.my/act/INDUSTRIAL_DESIGNact.pdf


To be registered, an industrial design must be new at the date an application for its registration is filed. A design is considered be new only if it has not been made available or disclosed to the public in any way whatsoever in Malaysia before the filing date of the application and it is not on the record the Register of Designs


An industrial design is the ornamental or aesthetic aspect of an article. The design may consist of three-dimensional features such as the shape and configuration of an article, or two-dimensional features, such as pattern and ornamentation. The design features must be applied to an article by any industrial process or means of which the features in the finished article appeal to eye.


• the aesthetic appearance of an articles is not significant or the design features differs only in immaterial details;

• it is a method or principle of construction • the designs are contrary to public order or morality; • the designs of the articles concern exclusively with how an

article functions; and • the designs of articles that are integral parts of other articles

and whose features are dependent upon the appearance of other article.

Country: Malaysia

158

Forms required to fill and submit http://www.myipo.gov.my ID Form 1 1. Application for the registration of an industrial design: for a single design = RM400.00 for each additional design specified = RM200.00 (Regulation 5) Publication for each view of the representation contained in the application. = RM50.00 (Regulations 10 and 22)


Duration of protection (years) First 5 years from filing, subsequently two 5-year terms on extension.




No



in local currency (RM) in US $ in local currency

in US $

a)Registration • For a single design • For each additional design • For publication of each view

of the design

400.00 200.00. 50.00

113.00 57.00 14.00

Same as for natural persons

b) Maintenance (renewal) • For a single design for the

2nd period of 5 years • For each additional design

for the 2nd period of 5 years • For a single design for the

3rd period of 5 years • For each additional design

for the 3rd period of 5 years

600.00

300.00.

800.00

400.00

170.00 85.00 226.00 113.00

Same as for natural persons

c)Others, if any


Deposit requirements, if any None


Certificate of Industrial Designs issued 8 months from the receipt of complete application.


• Exclusive right to make, import or sell or hire out any article to

which the design has been applied. • Other users should obtain the consent of the rightful owner

before using the design.




159


From the date of filing

Renewal process / procedure Malaysia Intellectual Property Corporation (MyIPO), 32 nd Floor, Dayabumi Tower, Jalan Sultan Hishamuddin, 50623 Kuala Lumpur Phone No: 603-2263 2100 (Operator) 603-2274 5113 (Helpdesk) Fax No: 603-22741332 http://www.myipo.gov.my


Grant of a compulsory license.

Opposition formalities Notice of opposition made to the Registrar on ID Form 4 with prescribed fee of RM50.00.


(a) applies the industrial design or obvious imitation (b) imports into Malaysia for sale, or for use for the purposes of any trade or business, any industrial design or obvious imitation registered outside Malaysia without the license or consent of the owner; or (c) sells, or offers or keeps for sale, or hires, or offers or keeps for hire, any of the articles described in paragraph (a) and (b).

Remedies for infringement The Court may award damages or an account of profits and may grant an injunction to prevent further infringement and any other legal remedies.


Layout-Designs of Integrated Circuits Act 2000




Yes


Infringement proceedings must be instituted no later than 5 years from date of infringement.



160

Chapter-9: IP Systems in Nigeria

Patent


Yes


Patents and Designs Act 1970; CAP 344 Laws of the Federation of Nigeria 1990.


Yes


Yes


Yes. Presence of Local Agents/Representatives necessary.


www.nigerianlaws.com; www.nigeria-law.org


Novelty, non-obviousness and industrial applicability.

Inventions not patentable S.1(2)(3)(4) Not new, obvious, non functional, plant or animal

Forms required to fill and submit Forms 1 and 2.


Duration of protection (years) 20years with annual renewal


The Registrar. Trademark, Patent and Design. Federal Ministry of Commerce and Industry, Area 1 Secretariat, P.M.B. 88 Garki, Abuja. Emai:[email protected]


Not Applicable




N(Naira)11,000(local) N13,000(foreign)

$109.70

N(Naira)11,000(local) N13,000(foreign)

$92.8 $109.70

b)Examination - - - -

Country: Nigeria

http://www.nigerianlaws.com/

161

c)Maintenance (renewal) N4000 $33.76 N4000 $33.76 d) Others, if any - - - -

Deposit requirements, if any Not Applicable Length of processing and release of Certificate (approx.), e.g. length of publication, examination, etc.

-


The right to exclude any other person from making, importing, selling, or using the product or applying the process. This right extends only to acts done for industrial or commercial purposes or where the patented product has been sold in Nigeria. The right to preclude on the exploitation of the patent. Right to license the patent. Right to assign


Limited to acts done for industrial or commercial purposes; does not include research activities or any activity for non commercial purposes


Date of filing at the International Bureau or at Convention Member Patent Office.

Renewal process / procedure Every year up to 20 years.

Opposition formalities Normal court formalities.


The act of making, importing, selling, or using the product or process without authorization from the patent holder.

Remedies for infringement Damages, injunction, accounts.


Yes. With respect to damages


NIL


NIL


NIL


Problem of inadequate funding is frustrating the operation of the office, in the following areas. Provision of working implements, file jackets. Stationeries and other security documents (certificate) etc. Computers and internet services/ Qualified manpower to be employed by government. Attendance to court cases and opposition tribunal. Dispatching of mails to patent owners in respect of certificates, renewals and in opposition cases. General Administration: It is necessary for the registry to have a strong financial base that will place the registry on a competitive level, so that it can measure up to international standard.

162



No


Part of the IP Bill that is in process

Type of protection (include special features, if any) e.g. Patent or PVP registration or both*

--


--


--


--

Country: Nigeria

163

Copyright


Yes. Nigeria has a copyright legislation


Copyright Act 1988 Cap C.28 Laws of the Federation of Nigeria 2004 (as amended in 1992 by the Copyright Amendment Decree No. 98) and 1999 (by the Copyright Amendment Decree No. 42)


Nigeria is member of the Berne Convention.


No special requirement but copyright being a personal right it is desirable for the owner to have a local agent or representative that will be monitoring the work and alert the owner and the Nigerian Copyright Commission in case of an infringement




The work must be original and must be in the medium from where it can be copied or reproduced


Literary works, artistic works, cinematograph film, musical works, sound recordings, and broadcast


Any work that does not fall into the category of works itemized above


Yes. A Notification Form is filled as part of the notification process.

Any special provisions/formalities There is provision for notification of the Nigerian Copyright Commission of the existence of the work under the Commission’s Notification’s Scheme designed to facilitate the creation of databank of authors of copyright works and their works for the purpose of planning, research and enforcement of rights.

Duration of protection (years) For literary, musical and artistic works, protection is for lifetime of the author of the work plus 70 years after his death. For other category of works, protection is for the lifetime of the author plus 50 years after his death.


Nigerian Copyright Commission, Federal Secretariat Complex, Phase 1, Annex II, (G-Floor) Shehu Shagari Way, Maitama Abuja. Website: www.copyrightnigeria.org

Country: Nigeria


http://www.copyrightnigeria.org/

164


Presently no. The Nigerian Copyright Commission however is in the process of developing its website that will facilitate online notification of copyright works.



in local currency(Naira)


in US $

a)Registration

N6000 for notification application form only as there is no registration but notification

$50.63 - -

b) Maintenance (renewal) Nil - - - c) Others, if any -

Deposit requirements, if any Published work 2 nos.

Unpublished work 1no.


1-2weeks


Reproduction, publishing, performance and distribution of copyright works

Exemptions Uses of the work that falls under the defense of fair dealing Other information Date of priority and requirements

Not applicable

Opposition formalities Not applicable What constitutes infringement of a copyrighted material

The reproduction, distribution, performance, publishing, and broadcast of a work without the permission of the copyright owner.

Remedies for infringement Damages, injunction, Anton Piller Order, and Accounts for profits. Renewal process / procedure Not Applicable Any relationship with other legislations in your country

No particular relationship with any other law in the country


Public Affairs Department, Nigerian Copyright Commission, Federal Secretariat Complex, Phase 1, Annex II, Shehu Shagari Way, Maitama Abuja.


Not Applicable


There is provision for notification of the Nigerian Copyright Commission of the existence of the work under the Commission’s Notification’s Scheme designed to facilitate the creation of databank of authors of copyright works and their works for the purpose of planning, research and enforcement of rights. It does not amount to registration.

165



No special legislation on Geographical Indication in Nigeria but it is covered by a section of the Trademarks Act


Trademarks Act CAP 436(Sect. 43) 436 Laws of the Federation of Nigeria (LFN) 1990


Yes. Section 43 of the Trademarks Act CAP 436 Laws of the Federation of Nigeria(LFN) 1990


Foreign registrants are required to register through certified agent. They are adequately protected when they register their marks. See s.5(1) of Trademarks Act 1990.




Distinctiveness needed

Grounds for refusal of registration Non distinctive marks, marks capable of causing confusion

Forms required to fill and submit Form 1- Power of Attorney; Form 2- The Application Form; Form 3 – Bromides

Any special provisions/formalities Filling of form1,2,3; Payment of statutory fees, and publication in the trademark journal

Duration of protection (years) Initially for 7 years thereafter every 14 years.


The Registrar. Trademark, Patent and Design. Federal Ministry of Commerce and Industry, Area 1 Secretariat, P.M.B. 88 Garki, Abuja. Email: [email protected]


Not Applicable.



in local currency(Naira)

in US $ in local currency(Naira)

in US $

a)Registration

N7000 official fee $59.07 N7000 $59.07

b)Maintenance (renewal) N8000 $67.50 N8000 $67.50 c) Others, if any N5000(Certificate) $42.20 N5000 $42.20 Deposit requirements, if any Nil Length of processing and release of Certificate (approx.)

One year maximum

Country: Nigeria



166


Exclusive Right to use the Mark


Nil

Other information Date of priority and requirements To be registered in Nigeria within one year Renewal process / procedure 3 months notice prior to renewal

Opposition formalities If there is opposition, the opponent files Notice of Opposition within

60 days, The Applicant files counter- statement within 30days. Thereafter both will file statutory declaration; the registrar will do the hearing in a quasi tribunal and then the ruling which can be appealed against in the Federal High Court. Any aggrieved applicant can appeal to the Court of Appeal, thereafter to the Supreme Court whose decision is final.


Using commercially a registered trademark without written permission of the registered owner.

Remedies for infringement Federal High Court grants remedies for infringement. Any relationship with other legislations in your country

None


Equitably


Nil


The Registrar. Trademark, Patent and Design. Federal Ministry of Commerce and Industry, Area 1 Secretariat, P.M.B. 88 Garki, Abuja. Email:[email protected] (Printed Copies Only)


Problem of inadequate funding is frustrating the operation of the office, in the following areas

• Provision of working implements, file jackets, stationeries and other security documents(certificate, renewal certificates etc

• Provision of computers and internet facilities • Employment of qualified manpower by government. • Attendance to court cases and opposition tribunal • Dispatching of mails to trademark owners in respect of certificates, renewals and in opposition cases. • General Administration: It is necessary for the registry to have a strong financial base that will place

the registry on a competitive level, so that it can measure up to international standard

167

Trademark


Yes


Trademark Act of 1965 CAP 436 Laws of the Federation of Nigeria, 1990


No.


The act allows for Trademark Protection for goods. A regulation made by the Minister allows for Service Marks Registration.


Yes. Must file their applications through an agent




Distinctiveness needed

What can be registered Trademarks (and by regulation Service marks)

What cannot be registered Non distinctive marks, marks capable of causing confusion

Forms required to fill and submit Forms 1, 2 and 3.

Any special provisions/formalities -- Duration of protection (years) 7 years and 14 years subsequently


The Registrar. Trademark, Patent and Design. Federal Ministry of Commerce and Industry, Area 1 Secretariat, P.M.B. 88 Garki, Abuja. Email: [email protected]


Not yet




N7000 (Bank Draft)

$59 N7000 (Bank Draft)

$59

b)Maintenance (renewal) N8000 $67.51 N8000 $67.51 c)Others, if any N5000(Certificate) $42.19 N5000(Certificate) $42.19 Deposit requirements, if any Nil Length of processing and release of Certificate (approx.), e.g. length of publication, examination, etc.

Processing 2weeks Publication 60days Examination 2weeks

Country: Nigeria


168


Exclusive Right to use the mark


6 months

Renewal process / procedure 3 months notice prior to renewal; renewal fee payable.

Opposition formalities If there is opposition, the opponent files Notice of Opposition within 60 days, The Applicant files counter- statement within 30days. Thereafter both will file statutory declaration; the registrar will do the hearing in a quasi tribunal and then the ruling which can be appealed against in the Federal High Court. Any aggrieved applicant can appeal to the Court of Appeal, thereafter to the Supreme Court whose decision is final.


None


Using commercially a registered trademark without written permission of the registered owner.

Remedies for infringement Federal High Court grants remedies for infringement.


None


The Registrar. Trademark, Patent and Design. Federal Ministry of Commerce and Industry, Area 1 Secretariat, P.M.B. 88 Garki, Abuja. Email:[email protected] (Hard Copies Obtainable only)



• Provision of working implements, file jackets, stationeries and other security documents(certificate, renewal certificates etc

• Provision of computers and internet facilities. • Employment of qualified manpower by government. • Attendance to court cases and opposition tribunal • Dispatching of mails to trademark owners in respect of certificates, renewals and in opposition

cases. • General Administration: It is necessary for the registry to have a strong financial base that will

place the registry on a competitive level, so that it can measure up to international standard

169

Designs


YES


Patents and Designs Act 1970


Nil


Yes. Presence of Local Agents/Representatives Necessary.




Novelty and Industrial Applicability.


Shapes, Configuration, Lines or Colour.


Functional Designs, Scandalous Designs or Trademarks

Forms required to fill and submit Design Forms for Textile and Non-Textile; Agent Form

Any special provisions/formalities Statement of Novelty and Sample of Design.

Duration of protection (years) Initially for 5 years, susequently10, divided into 5years each.


The Registrar. Trademark, Patent and Design. Federal Ministry of Commerce and Industry, Area 1 Secretariat, P.M.B. 88 Garki, Abuja. Email:[email protected]


Nil




in US $

a)Registration

N(Naira)13,000(Textile) N(Naira)12,000(Non Textile)

$109.71 $101.27

b) Maintenance (renewal) N4,000 $33.75 c) Others, if any --

Country: Nigeria


170



3 months.


Exclusive right to the design and prevent others from infringement.


--

Renewal process / procedure File formal application and pay fees.


--

Opposition formalities Allowed


Use of the design or product, incorporating it without authority.

Remedies for infringement --


Evidence Act


Nil


Yes. At the office.



• Provision of working implements, file jackets, Stationeries and other security documents(certificate, renewal certificates etc

• Provision of computerized system of registration and internet services. • Employment of qualified manpower. • Attendance to court cases and opposition tribunal • Dispatching of mails to design owners in respect of certificates, renewals and in opposition cases. • General Administration: It is necessary for the registry to have a strong financial base that will

place the registry on a competitive level, so that it can measure up to international standard

171

Chapter-10: IP Systems in Peru

Patent


Yes


Andean Decision 486 – 2000 (complemented by Decision 632 Legislative Decree 823 (1996) Legislative Decree 1075 (which will revoke 823 when the Free Trade Agreement with the US enters into force).


No (However, it has committed to do so when the PERU-US Free Trade Agreement enters into force.


Yes


Applications made by foreigners/foreign organizations should furnish an address in Peru for all procedural aspects.


http://www.indecopi.gob.pe/destacado-propInte-oficinas-oin-Legis.jsp


Novelty, inventive step and utility (industrial application).

Inventions not patentable • Inventions which are contrary to public order, moral or good customs

• Inventions that cause serious prejudice to human, animal or plant life or health or to the environment.

• Animal species or races and procedures that are essentially biologic.

• Inventions regarding components to the human body and its genetic identity (information) .

• Inventions regarding pharmaceutical products that are listed as essential by the World Health Organization.

Forms required to fill and submit • Application Form coded F-OIN-1 including solicitors

information, inventor’s information, description of the invention, claims and abstract of the invention.

• If applicable: Figures, Certificate of biological material deposit, Traditional Knowledge License, Genetic Resources Access Contract, Exhibit Certificate.

Any special provisions/formalities If inventions are regard genetic material the traditional knowledge

license, Genetic Resources Access Contract must be presented.

Country: Peru



172



Instituto Nacional de Defensa de la Competencia y de la Protección de la Propiedad Intelectual – INDECOPI

Calle de la Prosa 138 - San Borja | +511 224-7800 / 224-7777 Fax: +511 - 224-0348 E-mail: [email protected]


No

Cost (approx.) [1 US$ = 3.00] Applicable to natural persons (i.e. individuals)


in local currency


in US $

a)Examination and Registration

S/. 1088 (cost covers 10 claims)

363 S/. 1088 363

b) Maintenance (renewal) S/. 341.25 113.75 S/. 341.25 113.75 c) Others, if any S/. 21.30

(for each additional claim)

7 S/. 21.30 (for each additional claim)

7

Deposit requirements, if any A deposit certificate of the biological material must be presented as part of the procedure to obtain a patent (when patent involves biological material)


Depending on the nature of the invention seeking for protection, the procedure can take between 1 – 3 years.


Where a patent covers a product, exclusive right to prevent others from performing, without authorization, the act of making, using, offering for sale, selling or importing the product for the above purpose. Where a patent covers a process, patentee has the exclusive right to exclude others from performing, without his authorization, the act of using that process, using and offering for sale, selling or importing for those purposes, the product obtained directly by that process in Peru. Offering, introducing in the market or utilizing a product obtained directly from a patented procedure is also not allowed.


When the product is imported and has been previously commercialized by a licensee with the consent of the patent holder. When the use of the product is used privately and at non commercial scale. When it is used for non for profit, experimental, academic or scientific purposes. Compulsory licenses may be granted if it has not been possible to have an agreement with the patent holder with reasonable conditions.

173


Within 12 months from the date of filing. 4 additional months to present a legalized copy of previous filing in another country.

Renewal process / procedure Applicant has to renew the patent right by paying an annual fee (S/. 230.75 or USD 77).

Opposition formalities The pre-grant opposition can be filed within 60 work days after publication of the application. The post-grant opposition can be filed by any interested person within 12 months from the date of publication of the grant of the patent in the Patent Office Journal.


Acts of the defendant such as making, using, selling or manufacturing a patented product/procedure without taking authorization from patentee.

Remedies for infringement The patentee may pose a Patent infringement action before INDECOPI, which may order that the goods which are found to be infringing shall be forfeited or destroyed.


No


No


No


Yes


Access contracts Access contracts are agreements signed between the Peruvian State (particularly with the Ministry of Agriculture) and a person or company interested in accessing or utilizing the genetic resources contained in biological material. Contracts establish mutual agreed terms and include the previous informed consent of both parties. Minimum conditions that must be established within access contracts are as follows: - Prohibition to apply for Intellectual Property Rights on the genetic resource per se; establishment of specific

clauses regarding IP management in accordance with Law 27811 (Traditional Knowledge Law) - Prohibition to transfer the material to third parties unless previous authorization given by the competent

authority. - Recognition of the origin of the material - Participation of national researchers during the material collect and data gathering - Capacity building for the national scientific institutions involved in the process - Technology and scientific knowledge transfer linked to the access (including biotechnology) - Conditions regarding research within the country that contribute to conservation and sustainable use - Capacity building for indigenous communities - Sharing of research previews, results and publications derived from the access - Economic retribution to the Peruvian State for benefits derived from the access Legal framework for access to genetic resources in Peru:

174

Convention on Biological Diversity (Legislative Resolution 26181) Andean Decision 391 Common Regime on Access to Genetic Resources Regulations on Access to Genetic Resources (Supreme Decree 003-2009-MINAM) Traditional Knowledge Licenses Law 27811 (Regime for Collective Knowledge Law) establishes a special protection regime for collective knowledge associated to biological resources belonging to indigenous peoples. Persons or companies interested in having access to collective knowledge with scientific, commercial or industrial purposes must obtain previous informed consent from organizations representing indigenous communities. License agreements must establish compensation for use of knowledge. Such compensation will include an economic fee and a percentage of no less than 5% of sales before taxes of products derived direct or indirectly from the knowledge subject of the agreement. Previous to the agreement the community must receive form the person interested enough information regarding purpose, risks and potential use of the knowledge. Licensees must inform periodically of the progress of use or development of products regarding the knowledge. Capacity building activities for communities providing the knowledge must also be planned within the agreement.

175



Yes


Andean Decision 345 Supreme Decree 008-96-ITINCI


Plant variety protection


No (However, Peru has committed to be part of UPOV early 2009 when the Peru-US Free Trade Agreement enters into force).


No. For all administrative procedures, interested parties must provide an address within Peruvian territory and be locally represented.




New and essentially derived varieties (EDV).


No

Protection criteria (DUS etc.) Novelty, distinctiveness, uniformity and stability.

What cannot be protected Varieties that do not reach the protection criteria

Forms required to fill and submit Simple Form to obtain a PVP

Any special provisions/formalities a) Applicant should provide the passport data of the parental lines along with the geographical location in India from which the genetic material has been taken. b) A statement containing brief description of the variety bringing out its characteristics of novelty and DUS as required for registration. c) Every applicant shall provide a specified quantity of seeds of the variety for which registration is sought, for the purpose of conducting tests to evaluate whether seeds of such variety along with parental material conform to the standards as per regulations.

Duration of protection (years) Trees and vines- 20 -25 years Other crops- 15-20 years)

Country: Peru



176


Instituto Nacional de Defensa de la Competencia y de la Protección de la Propiedad Intelectual – INDECOPI Calle de la Prosa 138 - San Borja | +511 224-7800 / 224-7777 Fax: +511 - 224-0348 E-mail: [email protected]


No

Cost (approx.) (1 US$ = S/. 3.00) Applicable to natural persons (i.e. individuals)


in local currency


in US $

a)Registration

S/. 355 118 S/. 355 118

b)Priority Claim

S/. 35.5 12 -- --

c)DUS Test

S/. 2485 828 S/. 2485 828

d) Maintenance (renewal) S/.230 76 S/.230 76 e) Others, if any (Modifications) S/.355 118 S/.355 118 f) Opposition S/.266 88 S/.266 88 g) Annulment S/. 710 236 S/. 710 236 h) Licensing Request S/. 443 147 S/. 443 147 I) Formal complaint/report S/. 177 59 S/. 177 59

Deposit requirements, if any No Length of processing and release of Certificate (approx.), e.g. length of publication, examination, etc.

1 -1.5 years


Exclusive right to :

• Produce, reproduce, multiply or propagate (or preparing procedures to do so)

• Offer it for sale or sale it (or introduction in the market) • Export it/ Import it • Posses it for any of the above mentioned purposes

Farmers’ rights None in Decision 345 nor Supreme Decree 008-96-ITINCI.

However, it will have UPOV exemptions once US-Peru Trade Agreement enters into force.

Exemptions to farmers, if any No Research exemptions a) Private use, non commercial purposes

b) Research purposes

c) Use of the variety as parental line to obtain and exploit a new variety (except EDV).


Application has to be made within 12 months from the presentation of the application.

177

Renewal process / procedure No renewal, one procedure only.

Opposition formalities Within 30 work days from date of publication, any person(s) can

make an application for opposition


It is forbidden to : Produce, reproduce, multiply or propagate (or preparing procedures to do so)

Offer it for sale or sale it (or introduction in the market)

Export it/ Import it

By a person different from the holder of the right or licensee without permission;

Remedies for infringement Liability actions can be posed once the PBR has been granted.

However, liability remedies will also cover all damages occurred between application and grant of the right. Infringement action may be posed before INDECOPI. Both civil and criminal remedies are simultaneously available to breeder(s) upon infringement. Breeder can claim either compensation or share in profit in addition to injunction.


Seeds Law – Law 27262, this law establishes the regulations for promotion, supervising and regulation of the related activities to the investigation, production, certification and commercialization of quality seeds.


--


No


No


Yes


INIA has started to compile native potatoes varieties in a National Registry. However, it is only for informational purposes since there is no legal protection given to them.

178

Copyright


Yes


Andean Decision 351 Legislative Decree 822 (1996)


Yes


No


http://www.indecopi.gob.pe/ArchivosPortal/estatico/ legislacion/oin/DecretoLeg823.pdf


The following are eligible for copyright: (a) literary work (oral and/or written); (b) musical work (with o without lyrics) (c) artistic work of every nature (d) films (e) audiovisual material / work /expression (f) broadcasts / plays / artistic performances (g) Architecture works (h) Photography (i) Journalistic work (j) Software (computer programs, except data bases) (k) Compilations and anthologies (l) Any original work or material, result of an intellectual or artistic

expression and susceptible of being disclosed or reproduced by any means.


(see above)


Ideas per se contained in literary or artistic work, procedures, operational methods, systems, mathematical concepts, ideological and technical content of scientific work is not susceptible of being protected by copyright neither its industrial or commercial use. Official documents, translations, legislative and public administration texts are not susceptible of being protected by copyright as well. Notwithstanding, the obligation of quoting the source remains.

Country: Peru

http://www.indecopi.gob.pe/ArchivosPortal/estatico/

179

Daily news (except literally reproduction), simple facts or data may not be considered as copyright.

Forms required to fill and submit • For literary works form F-ODA-03 • For compilations form F-ODA-02 • For sound recordings form F-ODA-05 • For Software form F-ODA-02 • For broadcast form F-ODA-01 • For musical works, photography form F-ODA-04


Duration of protection (years) Protection remains during the author’s life and 70 years after his decease.


www.indecopi.gob.pe Calle de la Prosa 138 - San Borja , Lima, Perú Tel: (511) 224-7800 (511) 224-7777


Online submission is not possible



in local currency


in US $

a)Registration

S/.175 58

b) Maintenance (renewal) Not applicable Not applicable c) Others, if any Not applicable Not applicable

Deposit requirements, if any A copy of the artistic material/material/work/play has to be

presented


6 months


The © title holder has the exclusive right for the work, which is opposable to third parties. The © includes moral rights (meaning disclosure, paternity, integrity, modification, withdrawal, access) and patrimonial rights (reproduction, communication, distribution, translation, adaptation, imports/exports and any other commercial use). Registration is not compulsory and does not constitute the right per se (right exist for the fact that the author has created something, without any registration). However, it is always better to register it to defend it before third parties.

Exemptions (1) When an artistic material/work/play results from a pre existing one still protected by law, the author of the primary work has the same rights that the author to the second one. (2) Personal, Scientific or academic purposes. (3) Official and religious ceremonies.

http://www.indecopi.gob.pe/

180


The next day of publication of the work.

Opposition formalities Act for violation of copyrights may be posed at any moment, it must be accredited that the right belongs to the claimer


(1) Any act that goes against moral and patrimonial rights. (2)The infringement actions are restrictive to the copy rights standards ( Publishing in order to injure the author)

Remedies for infringement “Infringement action”

Renewal process / procedure Not applicable


Unfair competition regulations


http://www.bvindecopi.gob.pe/da.htm


Yes


--

181



Yes, Until September 2008, 4 products have been registered under Legislative Decree 823: “Pisco” (liquor), “Chulucanas” (ceramics), Maíz Gigante del Cuzco (type of corn) and “Pallares de Ica” (type of bean).


Andean Decision 486 – 2000 (complemented by Decision 632) Legislative Decree 823 (1996) Legislative Decree 1075 (which will revoke 823 when the Free Trade Agreement with the US enters into force)


Not applicable


No. For all administrative procedures, interested parties must provide an address within Peruvian territory and be locally represented. Holder of the GI title is the Peruvian State. However, the procedure may be started by parties with legitimate interest.


http://www.indecopi.gob.pe/ArchivosPortal/estatico/legislacion/ oda/DECRETOLEGISLATIVO822.pdf


Registrable Geographical Indications A registrable Geographical Indication may consist on the name of a region, or determined place or area located within the Peruvian territory used to designate a product with a certain degree of quality, reputation and characteristics essentially derived from the geographical environment (including natural and human aspects).

Grounds for refusal of registration Terms not designating a region or a specific geographical place. GI that are contrary to the public order, good customs or manners or that may cause confusion to the consumer regarding origin, nature, way of production, characteristics or quality of the product. GI that are common names/generic terms used to designate a product by the general public.

Forms required to fill and submit a) Declaration of geographical indications b) Authorization of use c) Opposition to register d) Renewal of authorized user e) Search and permitted rectifications

Country: Peru

http://www.indecopi.gob.pe/ArchivosPortal/estatico/legislacion/

182

Any special provisions/formalities The application must be presented indicating the following: a) Name, address, residence and nationality of the petitioners b) The geographic area of the production, extraction or manufactured product. c) The product quality and characteristics d) The protection declaration for a geographical indication must be published once on the National Journal (“El Peruano”).

Duration of protection (years) 10 years renewable for 10 more years (unlimited renewal)




No



in local currency


in US $

a)Registration

437.5 for declaration 105 for authorization

142 for declaration 34 for authorization

437.5 for declaration 105 for authorization

142 for declaration 34 for authorization

b) Maintenance (renewal) 437.5 142 437.5 142 c) Others, if any 339.5 for

opposition 382 for modifications

89 for opposition 124 for modifications

339.5 for opposition 382 for modifications

89 for opposition 124 for modifications

Deposit requirements, if any No


2 years


The registered geographical indication must be used only by authorized producers in the geographical area specified in the Register for the commercialization of their products. The use of the GI registered must be in accordance with the quality, reputation and characteristics of the products specified in the Register.


Conditions and quality of product must be maintained along time. Otherwise, users of GI loose the right to use it to distinguish their product.


Not applicable per se; Conditions (that give certain quality to a product) must prevail for using the GI. However, if a conflict

183

emerges from the granting and use of the GI, it is solved before WIPO case by case.

Renewal process / procedure Not for the GI itself, but it is necessary to renew authorizations for use.

Opposition formalities Any interested person may give notice to the Registrar and the applicant of his intention to oppose the application if the pretended GI: (a) does not fall within the meaning of the definition of "geographical indication" under the 823 Decree; (b) is contrary to public order or morality; (c) is considered as a generic product.


Regarding the use of the GI, any interested person may initiate proceedings to prevent: (a) the unauthorized use of the GI in the designation or presentation of any goods that indicates or suggests, in a manner which may mislead the consumer or public, the geographical origin of the good different from the real place of origin/production; (b) any commercial practice that may cause confusion or mistake to the final consumer.

Remedies for infringement “Infringement Action” (control exercised by INDECOPI)


--


--


Information not available on-line


Calle de la Prosa 138 - San Borja , Lima, Perú Telf: (511) 224-7800 (511) 224-7777

Any other additional information [You are free to include any salient features of the protection system that are unique or different, which you would like to highlight.] So far, the Government of Peru is the holder for the following GI’s: Pisco Maiz Blanco Gigante del Cuzco Cerámica de Chulucanas Pallares de Ica

184

Trademark


Yes


Andean Decision 486 – 2000 (complemented by Decision 632 Legislative Decree 823 (1996) Legislative Decree 1075 (which will revoke 823 when the Free Trade Agreement with the US enters into force)


No


Both


Foreigners/foreign organizations should either grant powers to representatives or open a branch in Peru for all procedural aspects.


http://www.indecopi.gob.pe/ArchivosPortal/estatico/legislacion/ oin/DecretoLeg823.pdf


A registrable trademark should be perceptible, sufficiently distinctive and able to be graphically represented.

What can be registered A trademark shall contain or consist of at least one of the following (a) Real or invented words or a combination of them (b) Images figures symbols graphics, logos and sounds (c) Letters, numbers, combination of colors. (d) Tridimentional forms (packages, unusual ways of presenting a

product, containers) (e) Any combination of signs other mentioned in (a), (b), (c) or (d).

What cannot be registered • Pretended trademarks that do not reach or comply with (a)-(d) • Usual shape of products or its containers • Shapes that may be a functional or technical advantage to the

product or service • Sign or indication to describe the nature, quality, quantity,

value, characteristics or any information of the product or service

• A common or usual term used in the common language • A simple isolated color, without a specific, delimited shape • Signs that may be considered against the law, moral, public

order or good manners/customs.

Country: Peru

http://www.indecopi.gob.pe/ArchivosPortal/estatico/legislacion/

185

• Signs that may deceive the media or the public especially regarding origin, nature, way of production, characteristics, quality of the product or service.

• Signs that may reproduce or imitate a protected geographical indication (national or international) and that may result confusing to the consumer regarding origin, precedence, quality or characteristics.

• Signs that reproduce or imitate names, coats of arms, flags, acronyms or any other term to designate any State or international organization, without previous authorization of the competent authority. Such signs may Only be registered if they are accesory or secondary to the principal distinctive.

• Signs that may used to designate aproval or accordance with technical laws (unless its registration is required by the competent national organism)

• Reproduction of currency, bills, trade instruments, documents, stamps or similar used in any country

• Signs that may consist in a protected plant variety or in a variety essentially derived from it.

• Signs that are similar to previously registered ones and that may lead to confusion to an average consumer.

Forms required to fill and submit Application form indicating the sign that may be registered,

product, service, economic activity and class in which the registration is requested. Priority (if applicable)


Duration of protection (years) 10 years renewable for 10 more years (unlimited renewals)




No



in local currency


in US $

a)Registration

S/. 486.35 162 S/.486.35 162

b) Renewal (maintenance) S/. 443.75 148 S/.443.75 148 c) Others, if any No No No No Deposit requirements, if any No


4 months (if there is no opposition from a third party) Between 6 months and 1 year when there has been opposition by a third party.

186


• Exclusive use of the registered sign • TM owner may act against any third party that without his

consent: • Uses the TM registered or similar to it that may cause

confusion to the consumer • Commercializes, offers, stores, or introduces in the market

products or services with the registered TM • Imports or exports products with the registered TM. • Carry on any other similar act aforementioned.


6 months 3 additional months to present a legalized copy of previous filing in another country.

Renewal process / procedure Payment for renewal with a shorter procedure (2-3 months)

Opposition formalities TM should have been registered for at least three years for an opposition to be properly filed.


Unfair Competition Act


Commercializing a product or service using a registered TM or using it for advertisement purposes.

Remedies for infringement TM infringement action before INDECOPI, which may order that the goods which are found to be infringing shall be forfeited or destroyed.


Yes, previous registration and payment for the service Link: http://www.indecopi.gob.pe/serv-online-depago.jsp


http://sistemas.indecopi.gob.pe/osdconsultaspublicas/


--

187

Designs


Yes


Andean Decision 486 – 2000 (complemented by Decision 632) Legislative Decree 823 (1996) Legislative Decree 1075 (which will revoke 823 when the Free Trade Agreement with the US enters into force).


Not applicable


No. For all administrative procedures, interested parties must provide an address within Peruvian territory and be locally represented.


http://www.indecopi.gob.pe/ArchivosPortal/estatico/legislacion /oin/DecretoLeg823.pdf


New combination of lines or colors or any external bidimensional or tridimensional shape that is in accordance with public order and good manners.


Any combination of lines or colors or any external bidimensional or tridimensional shape.


• Usual shape of products or its containers • Shapes that may be a functional or technical advantage to the

product or service • Sign or indication to describe the nature, quality, quantity,

value, characteristics or any information of the product or service

• A common or usual term used in the common language • A simple isolated color, without a specific, delimited shape • Designs that may be considered against the law, moral, public

order or good manners/customs. • Designs that may deceive the media or the public specially

regarding origin, nature, way of production, characteristics, quality of the product or service.

• Designs that may reproduce or imitate a protected geographical indication (national or international) and that may result confusing to the consumer regarding origin, precedence, quality or characteristics.

• Designs that reproduce or imitate names, coats of arms, flags, acronyms or any other term to designate any State or

Country: Peru

http://www.indecopi.gob.pe/ArchivosPortal/estatico/legislacion

188

international organization, without previous authorization of the competent authority. Such signs may only be registered if they are accessory or secondary to the principal distinctive.

• Designs that may used to designate approval or accordance with technical laws (unless its registration is required by the competent national organism)

• Reproduction of currency, bills, trade instruments, documents, stamps or similar used in any country

• Designs that may consist in a protected plant variety or in a variety essentially derived from it.

• Designs that are similar to previously registered ones and that may lead to confusion to an average consumer.

Forms required to fill and submit Designs Register form F-OIN-02


Duration of protection (years) Ten years from filing, afterwards, it will be of public domain/

knowledge




Online submission is not available



in local currency


in US $

a)Registration

577 192 577 192

b) Maintenance (renewal) 237 79 237 79 c) Others, if any 355

(Modification) 118 355

(Modification)

118

Deposit requirements, if any None (only presentation of the design that will be registered)


3-6 months


• Excluding third parties of the use of the design. • Excluding any one who produce or commercialize a

product similar or with secondary differences from the protected design

• The design owner will be able to transfer the design or license it, in which case it must be registered before INDECOPI.

189


From the date of filing



Not applicable.

Opposition formalities Oppositions may be filed within 30 work days from publication.


Commercializing a product or service using a registered design or using it for advertisement purposes.

Remedies for infringement “Infringement Action” posed by the affected third party


None


Instituto Nacional de Defensa de la Competencia y de la Protección de la Propiedad Intelectual – INDECOPI Calle de la Prosa 138 - San Borja | +511 224-7800 / 224-7777 Fax: +511 - 224-0348 E-mail: [email protected] http://www.bvindecopi.gob.pe/boletinelec.htm


Yes


--

http://www.bvindecopi.gob.pe/boletinelec.htm

190

Chapter-11: IP Systems in Philippines

Patent


Yes


Intellectual property Code of the Philippines (R.A. No. 8293), June, 1997


Yes


Yes


Resident agent


www.ipophil.gov.ph


• Novelty • Inventive step • Industrial applicability

Inventions not patentable • Discoveries, scientific theories, and mathematical methods • Schemes, rules and methods of performing mental acts,

playing games, or doing business, and programs for computers

• Methods for treatment of the human or animal body by surgery or therapy and diagnostic methods practiced on the human or animal body (does not apply to products and composition for use in any of these methods)

• Plant varieties or animal breeds or essentially biological process for the production of plants or animals (does not apply to micro-organisms and non-biological and microbiological processes

• Aesthetic creations • Anything contrary to public order or morality

Forms required to fill and submit Petition for the grant of a patent Disclosure an description of the invention/ Claims/ Abstract

Any special provisions/formalities -

Duration of protection (years) 20 years

Country: Philippines

http://www.ipophil.gov.ph/

191


Intellectual Property Office, Gil Puyat Avenue, Makati City Tel. Nos. (632) 752-5450 to 65 Loc. 201 to 205 Telefax (632) 897-1724 Email at [email protected] or [email protected]. www.ipophil.gov.ph


Not yet



in local currency


in US $

a)Registration

-

b)Examination

-

c) Maintenance (renewal) - d) Others, if any -



--


• To restrain, prohibit, and prevent any unauthorized person or

entity from making, using, offering for sale, selling, or importing the product

• To restrain, prohibit, and prevent any unauthorized person or entity from using the process, and from manufacturing , dealing in, using, selling or offering for sale, or importing any product obtained directly or indirectly from such process

• To assign or transfer by succession the patent and to license the same


• Use of a patented product which has been put on the market in the Philippines by the owner of the product or with his consent, insofar as such use is performed after that product has been sp put on the said market

• Acts done privately, on a non-commercial scale, and for a non-commercial purpose

• Making or using exclusively for experiments related to the subject matter of the patented invention

• Acts consisting of the preparation for individual cases, in a pharmacy or by a medical professional, of a medicine in accordance with a medical prescription or acts concerning the medicine so prepared

• Use on any ship, vessel, aircraft, or land vehicle of any other country entering the Philippines temporarily or accidentally; Provided, the invention is used exclusively for the needs of the such vessel and not used to manufacture anything to be sold within the Philippines


a. First to file in the Philippines


192

b. Priority filing date for foreign application, Provided: 1. Country of foreign application grants by treaty, convention,

or law similar privileges to Filipino citizens; 2. Local application expressly claims priority; 3. Local application filed within 12 months from the earliest

foreign application; 4. Certified copy of the foreign application together with an

English translation is filed within 6 months from the date of filing in the Philippines

Renewal process / procedure --

Opposition formalities 1. Following publication of the application, any interested person

may submit his observations in writing on the patentability of the invention. The applicant may comment on these observations. 2. Following the grant of the patent, any person may move to cancel the patent or any claim, or parts of claims on the following grounds: • Invention is not new or patentable • Petition in writing and under oath • Specific grounds • Statement of facts upon which petition is based, with copies of

publications, patents or other supporting papers


Unauthorized making, using, offering for sale, selling, or importing a patented product or a product obtained directly from a patented process, or using a patented process

Remedies for infringement • Civil action for damages, including reasonable royalty, with injunctive relief

• Disposal or destruction of infringing products • Criminal action for repetitive infringement


R.A. 7459, Inventors and Invention Incentives Act (1992)


www.ipophil.gov.ph


--


Yes


--


193



Yes


An Act to Provide Protection to New Plant Varieties, Establishing a Plant Variety Protection Board and for Other Purposes, Republic Act No. 9165, 2002


PVP registration


No


Yes – Resident agent and address in the Philippines, and reciprocity


www.bpi.da.gov.ph


New varieties; essentially derived varieties


No

Protection criteria (DUS etc.) New, distinct, uniform, stable

What cannot be protected None

Forms required to fill and submit Application form, receipt for payment of fees, certificate of deposit of sample seeds with accredited gene bank (in lieu of seeds)


Duration of protection (years) Trees and vines – 25 years from grant date Other types of plants – 20 years


Plant Variety protection Office, Bureau of Plant Industry, Department of Agriculture, Quezon City


Not yet


http://www.bpi.da.gov.ph/

194



in local currency


in US $

Registration

-

Examination

-

DUS Test -

Maintenance (renewal) - Others, if any

-

Deposit requirements, if any • For seeds: 3,000 untreated viable seeds or certificate that sufficient samples have been deposited with an accredited gene bank, or breeder keeps the seeds under the monitoring of the Plant Variety Protection Board

• For tuber propagated variety and fruit, plantation and ornamental crops: certificate that a viable culture has been deposited with an accredited depositary gene bank or certificate that a plot of vegetative material has been established in an accredited depositary and will be maintained for the required period


10 days from application for formal examination, 30 days to correct deficiencies in application (with extension of 30 days, upon request); 60 days from filing date for publication in the Plant Variety Gazette; Actual examination depends upon the growth cycle of the crop applied for


Exclusive right to authorize: a) Production or reproduction; b) Conditioning for the purpose of propagation; c) Offering for sale; d) Selling or other marketing; e) Exporting; f) Importing; and g) Stocking for any of the aforementioned purposes.

Farmers’ rights -- Exemptions to farmers, if any • Traditional right of small farmers to save, use, exchange,

share or sell their farm produce, except when sale is for reproduction under a commercial marketing agreement;

• Sale and exchange of seed among small farmers, including sale and exchange of seeds among small farmers for reproduction and replanting in their own land

Research exemptions • Experimental purposes; Noncommercial purposes; For

breeding other varieties, except when Other information Date of priority and requirements

First to file rule applies; foreign filing date considered local filing date provided that: • local application expressly claims priority; • local application filed within 12 months from earliest foreign

application; • applicant submits within 6 months authenticated copies of

documents constituting the foreign application, samples

195

showing identity of the variety • proof of reciprocity

Renewal process / procedure None Opposition formalities Guidelines pending


• Sell, offer for sale, deliver, consign, exchange, solicit an offer to buy, or any other transfer or possession of the novel variety

• Import or export • Sexually multiply as a step in marketing (for growing

purposes) • Use (as distinguished from develop) in producing a hybrid or

different variety • Use seed which has been marked “unauthorized propagation

prohibited” or “unauthorized seed multiplication prohibited” or progeny thereof to propagate the novel variety

• Dispense to another in a form that can be propagated without notice as to being a protected variety under which it was received

• Fail to use an obligatory variety denomination • Perform any of the foregoing acts even in instances where the

novel variety is multiplied other than sexually, except in pursuance of a valid Philippine plant patent

• Instigate or actively induce performance of any of the foregoing acts

Remedies for infringement • Actual, moral, exemplary damages, including attorney’s fees • Injunction • Confiscation of infringing materials, with distribution to

charitable organizations, or proceeds of sale given to research organizations, or return materials to rights holder for further scientific use

• 3 to 6 years imprisonment and/or fine of 3x the profits from infringement but not less than P100,000.00


Indigenous People’s Rights Act (RA 8371), Wildlife Resources Conservation and Protection Act (RA 9147), Philippine Environmental policy (PD 1151), Executive Order No. 430 and Department of Agriculture Administrative Order No. 8, Series of 2002 (Rules & regulations for the importation and release to the environment of plant products derived from biotechnology)


None


http://www.bpi.da.gov.ph/Programs/PVPO.html


PVPO & website


Yes (compulsory licensing after 2 years from grant of PVP Certificate and for the public interest and: Reasonable requirements of the public for any part of the variety are not met. Overseas market for any part of the variety are not met. Variety relates to or is required in the production of medicine and/or any food preparation. Guidelines pending


--

http://www.bpi.da.gov.ph/Programs/PVPO.html

196

Copyright


Yes




Yes


Resident agent; reciprocity


www.ipophil.gov.ph


Originality and expression


Literary and artistic works, computer programs, and derivative works


• Ideas, procedures, systems, methods or operation, concept, principle, or discovery or mere data; news of the day, and other miscellaneous facts having the character of mere items of press information; official text of a legislative, administrative, or legal nature, as well as any translation thereof

• Works of the Government Forms required to fill and submit Application form Any special provisions/formalities Copyright acquired from moment of creation; registration optional

Duration of protection (years) Lifetime of author, plus 50 years after his or her death




Not yet



in local currency


in US $

a)Registration

-

b) Maintenance (renewal) - c) Others, if any -




197

Deposit requirements, if any Deposit of copy optional


Approx. 3 years


Exclusive right to carry out, authorize, or prevent: • Reproduction of the work or substantial portion thereof • Dramatization, translation, adaptation, abridgment,

arrangement or other transformation of the work • First public distribution of the original and each copy of the

work by sale or other forms of transfer of ownership • Rental of the original or a copy of an audiovisual or

cinematographic work, a work embodied in a sound recording, computer program, a compilation of data and other materials, or a musical work in a graphic form, irrespective of the ownership of the original or the copy which is the subject of the rental

• Public display of the original or copy • Public performance of the work • Other public communication of the work Moral rights of author to: • Attribution • Make alterations prior to or to withhold publication • Object to any distortion, mutilation, modification, or other

derogatory action in relation to his work • Restrain the use of his name with respect to any work not of

his own creation or in a distorted version of his work

Exemptions • Recitation or performance of a work done privately or for a charitable or religious institution or society

• Making quotations from a published work if compatible with fair use and to the extent justified for the purpose

• Reproduction or communication to the public by mass media of articles of current, political, social, economic, or religious topic, lectures, addresses and other works of the same nature delivered to the public for information purposes and has not been expressly reserved

• Reproduction and communication to the public of literary, scientific, or artistic works as part of reports of current events by means of photography, cinematography, or broadcasting to the extent necessary for the purpose

• Inclusion of a work in a publication, broadcast, or other communication to the public , sound recording or film, if such inclusion is made by way of illustration for teaching purposes and is compatible with fair use

• Recordings made in schools, universities or educational institutions

• Making ephemeral recordings by a broadcasting organization by means of its own facilities and for use in its own broadcast

• Use by the Government or the National Library or by educational, scientific or professional institutions which is in the public interest and is compatible with fair use

• Public performance or other communication to the public of a work in a place where no admission fee is charged , by a club or institution for charitable or educational purposes only,

198

whose aim is not profit-making • Public display of the original or copy of the work not made by

means of a film, slide, television image or otherwise on screen or by means of any other device or process; Provided the work has been published or that the original or copy displayed has been sold, given away, or otherwise transferred to another person by the author or his successor in title

• Any use for judicial proceedings or giving professional advice by a legal practitioner


N/A

Opposition formalities N/A


Exercise of rights of copyright holder

Remedies for infringement • Civil action for damages, with injunctive relief • Criminal prosecution



P.D. 1987, An Act Creating the Video gram Regulatory Board; R.A. 8047 (1985), An Act Providing for the Development of the Book Publishing Industry Through the Formulation and Implementation of a National Book Policy and National Book Development Plan (1995)


National Library


Yes


--

199



Not specifically, but only insofar as an application for trademark registration cannot consist exclusively of an indication of origin that is, or will tend to be, confusing or deceptive


--




- -


--


200

Trademark


Yes




--


Both


Resident agent


www.ipophil.gov.ph


Distinctiveness

What can be registered Visible sign – words, symbols, color

What cannot be registered • Immoral, deceptive, or scandalous matter, or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt or disrepute

• Flag, or coat of arms, or other insignia of the Philippines or any of its political subdivisions, or of any foreign nation, or any simulation thereof

• Name, portrait, or signature identifying a particular living individual except by his written consent,or the name, portrait or signature of a deceased President of the Philippines during the life of his widow, if any, except by written consent of the widow

• Identical with a registered mark belonging to a different proprietor or a mark with an earlier filing or priority date in respect of:

• The same goods or services or • Closely related goods or services or • Near resemblance as to be likely to deceive or cause

confusion • Identical with, or confusingly similar to, or constitutes a

translation of a mark which is considered by competent



201

Philippine authority to be well-known internationally and in the Philippines, whether or not registered in the Philippines and belonging to a different person and used for identical or similar goods or services, or registered in the Philippines and used for different goods or services than those applied for and would indicate a connection between those goods or services and the owner of the registered mark, provided that the interests of the registered owner are likely to be damaged by such use

• Likely to mislead the public , particularly as to the nature, quality, characteristics or geographical origin of the goods or services

• Consists exclusively of signs that are generic for the goods or services applied for

• Consists exclusively of signs or indications that have become customary or usual to designate the goods or services in everyday language or in bona fide and established trade practice

• Consists exclusively of signs or of indications that may serve in trade to designate the kind, quantity, quality, intended purpose, value, geographical origin, time or production of the goods or rendering of the services, or other characteristics of the goods or services

• Consists of shapes that may be necessitated by technical factors or by the nature of the goods themselves or factors that affect their intrinsic value

• Consists of color alone, unless defined by a given form • Is contrary to public order or morality


Application form


Duration of protection (years) 10 years, subject to submission of proof of actual use in commerce within one year from the 5th anniversary of registration, with renewal of periods of 10 years




Not yet



in local currency

In US $ in local currency

in US $

a)Registration

--

b) Maintenance (renewal) -- d) Others, if any

--

Deposit requirements, if any Facsimiles of mark


Approx. 3 years



202


Exclusive right to use in the course of trade identical or similar signs or containers for goods or services which are identical or similar to those in which the trademark is registered


Yes, considered filed in the Philippines as of the date of the foreign registration, provided registration is granted in such other country; Reciprocity required

Renewal process / procedure Filing of written request and payment of fees within 6 months before expiration, or within 6 months after expiration with payment of additional fees

Opposition formalities 1. In writing and under oath 2. Payment of fees within 30 days from publication of application,

subject to extension for good cause


R.A. 623, An Act to Regulate the Use of Duly Stamped or Marked Bottles, Boxes, Casks, Kegs, Barrels, and other Similar Containers (1951); P.D. 881, Regulating the Labeling, Sale, and Distribution of Hazardous Substances (1976);


1. Use in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark or the same container or a dominant feature thereof in connection with the sale, offering for sale, distribution, or advertising of any goods or services including other preparatory steps necessary to carry out the sale of any goods or services which is likely to cause confusion or mistake or to deceive

2. Reproduce, counterfeit, copy, or colorably imitate a registered mark or a dominant feature thereof and apply such reproduction, counterfeit, copy or colorable imitation to labels, signs, prints, packages, wrappers, receptacles, or advertisements intended to be used in commerce in connection with the sale, offering for sale, distribution, or advertising of goods or services which is likely to cause confusion, or to cause mistake, or to deceive

Remedies for infringement Civil action for damages, with injunctive relief; destruction of

infringing materials


www.ipophil.gov.ph


www.ipophil.gov.ph


--



203

Designs


Yes




--


Resident agent; reciprocity


www.ipophil.gov.ph


New or original


Industrial design that can serve as a pattern for an industrial product or handicraft


Industrial designs that are dictated essentially by technical or functional considerations to obtain a technical result or those that are contrary to public order, health, or morals

Forms required to fill and submit Application form

Any special provisions/formalities -- Duration of protection (years) 5 years from filing date, renewable for two consecutive periods of

5 years each Registry Office contact details (Mailing address, phone, website, email, etc.)



Not yet



in local currency


in US $

a)Registration

-

b) Maintenance (renewal) - e) Others, if any -




204

Deposit requirements, if any Same as patent rights Length of processing and release of Certificate (approx.)

--


Same as patent rights



Renewal process / procedure Written application and payment of fees



Opposition formalities Same as patent rights



Remedies for infringement



--


www.ipophil.gov.ph


Yes


--


205

Chapter-12: IP Systems in Tanzania

Patent


Yes.


The Patents Act, 1987, the Act is being revised to comply with TRIPS obligations


Yes.

State whether your country is a member of World Trade Organization (WTO)

Yes.


Applications made by foreigners/foreign organizations should furnish an address in Tanzania for all procedural aspects. This will not be applicable, if application is received under PCT.


http://www.brela-tz.org


Novelty (defined with originality and prior art search), non-obviousness (defined with inventive step) and industrial application (defined with utility). There is no substantive examination, formalities examination is performed.

Inventions not patentable The following shall not be regarded as inventions within the meaning of subsection (l): (a) discoveries, and scientific and mathematical theories; (b) plant or animal varieties or essentially biological processes for the production of plants or animals, other than microbiological and the products of such processes; (c) schemes, rules or methods for doing business, performing purely mental acts or playing games; (d) methods for the treatment of the human or animal body by surgery or therapy, as well as diagnostic methods; but shall not apply to products for use in any of those methods; (e) mere presentation of information.

Forms required to fill and submit Form 1 – Application form accompanied with patent document in triplicate Form 3 – Information and assignment Authorization form (Power of Attorney) – If filed through Patent Agent

Country: Tanzania

http://www.brela-tz.org/

206

Any special provisions/formalities Applications can be submitted personally or sent by post or, courier but can not be made electronically.

Duration of protection (years) 20 years from the date of filing of the application (First grant is for 10 years renewable for twice each five years period).


Patent application is filed with the office of the Registrar of Patent. Business Registration and Licensing (BRELA) Lumumba Street, Ushirika (TFC) Building’ 2nd – 4th Floors P.O Box 9393 Dar es Salaam Tanzania Tel: +255 22 2180114, 21801344 Fax: +255 22 2180371, Email:- [email protected] Website: http://www.brela-tz.org


No.

Cost (approx.) [1 US$ = Rs. 45] in local currency (Tsh.)

in US $ Application + Advertisement + Grant

50,000 $ 22 Annuities

-



Approximately 6 months from the date of filing.


The owner of the patent has the right to preclude any person from exploiting the patented invention by any of the following acts:- When the patent has been granted in respect of a product; (i) making, importing, offering for sale, selling and using the product, (ii) stocking such product for the purposes of offering for sale, selling or using; When the patent has been granted in respect of a process:- (i) using the process. (ii) doing any of the acts referred to above, in respect of a product obtained directly by means of the process.


Section 37 of the Patent Act provides as follows: (1) The rights under the patent shall extend only to acts done for industrial or commercial purposes and in particular not to acts done for scientific research. (2) The rights under the patent shall not extend to acts in respect of articles which have been put on the market in the United

mailto:@cats-net.com


207

Republic by the owner of the patent or with his express consent. (3) The rights under the patent shall not extend to the use of articles on aircraft, land vehicles or vessels of other countries which temporarily or accidentally enter the United Republic. (4) The rights under the patent shall be limited by the provisions on the patent term contained in Part VIII. (5) The rights under the patent shall be limited by the provisions on compulsory licences for reasons of public interest or based on interdependence of patents contained in Part XI and by the provisions on State exploitation of patented inventions contained in Part XIII.






Acts of the defendant such as making, using, selling or manufacturing a patented product without taking authorization from patentee.

Remedies for infringement The court may grant an injunction at the option of the plaintiff, either damages or an account of profits. The court may also order that the goods which are found to be infringing shall be seized, forfeited or destroyed.


No


N/A


Presently an electronic Journal is published but is not posted to the organization’s website for printing. It is mailed to listed stakeholders


Yes


--

208



Yes


The Protection of New Plant Varieties (Plant Breeders’ Rights) Act, Act No.18 of 2002. Official operational date was 1st February 2004


Protection of a plant variety


No


Every applicant must have a local representative and address


www.agriculture.go.tz


Any new including essentially derived variety (EDV) may be protected.


N/A

Protection criteria (DUS etc.) Novelty- means variety should not have been sold in Tanzania prior to one year of application and for foreign applicants prior to six years for trees and vines and for four years for other crops. Other requirements include Distinctiveness, Uniformity and Stability and are as provided- under UPOV 1991 Convention. In addition a variety must have an acceptable denomination and the applicant must fulfill administrative requirement that include filling in application forms and Payment of prescribed fees).

What cannot be protected Variety of a crop species which is not prescribed in the list of eligible crop species. Otherwise there is no any additional condition other than the criteria given above.

Forms required to fill and submit Form PBR I - Application for a Grant of Plant Breeders’ Rights

Any special provisions/formalities The application should contain following with the application on

Country: Tanzania


209

proper format (a) In the prescribed application form the applicant must describe the candidate variety and also give special characteristics that differentiate it with any other similar or closely related variety (b) Every applicant shall provide a specified quantity of seeds of the variety for which registration is sought, for the purpose of conducting tests to evaluate their DUS compliance (c) The applicant must make a declaration that all information provided in the application form is correct

Duration of protection (years) Trees and vines are protected for 25 years while other crops are protected for 20 years.


The Registrar of Plant Breeders’ Rights, Ministry of Agriculture Food Security and Cooperatives P.O Box 9192 Dar es Salaam, Tanzania Tel: +255 22 286404 Fax: +255 22 2864043 Website: www.agriculture.go.tz Email: [email protected]


No

Costs involved (Fees): Amount in US $ Application for a grant

200

Application for a provisional protection

300

Technical evaluation (DUS test) 600

Purchase of test DUS results from PBR Authorities of other countries

320

Annual Maintenance charges

200

Extension of period of grant

100

PBR Certificate 240

Change of Variety denomination 80 Others, if any See First Schedule of PBR Regulations,2008 on Fees and Related

Charges

Deposit requirements, if any Sample deposit is required by law but no minimum amount has been described so far.


After the application has been received the Registrar is required by law to notify the public by a notice in the official gazette giving brief description of the application. If no objection is received within 60 days the Registrar shall initiate DUS test or purchase one if it has already been conducted in other countries by a competent authority. The test may take one to two seasons depending on nature of tests required. If the test results are positive the Registrar shall grant the rights and notify the public in the government gazette.



210


Exclusive right to produce, sell, market, stock and import or export the variety

Farmers’ rights Farmers are privileged to save and use seeds of a protected variety on their own holdings

Exemptions to the breeders rights Exemption of breeder’s authorization for the use of his/her variety for breeding purposes. However, authorization of the breeder is required when repeated use of the registered variety as a parental line is necessary for commercial production of such other newly derived variety.


Application has to be made within 12 months in Tanzania for which application has already been made in a Convention country.

Renewal process / procedure The term of protection may be extended for an additional five years, following a written notice to the Registrar given by the right holder, six months before the expiration of the original term.

Opposition formalities Within 60 days (2 months) from the date the application notice was published in the official gazette, any person(s) can submit a written objection giving grounds for the objection. No objection fee is charged.


Section 51 of the PBR Act provides that Any person who -

• knowingly makes a false entry in the register; • knowingly makes a writing which falsely purports to be a

copy of an entry in the register or of a document lodged with the Registrar;

• knowingly produces or tenders a false entry of copy as evidence;

• knowingly submits a false document or makes a false statement or representation to the Registrar in regard to any action described under this Act;

• knowingly obstructs or hinders the Registrar or any officer in the exercise of his powers or the carrying out of his functions under this Act;

• having been duly summoned to appear at any proceedings under this Act, fails without lawful excuse to so appear;

• having appeared as a witness at any proceedings under this Act, refuses without lawful excuse to be sworn or to make affirmation or to produce any document or answer any question which he may be lawfully required to produce or answer;

• falsely represents that propagating material sold by him for the purpose of propagation or multiplication is propagating material of a variety in respect of which a plant breeders’ right has been granted under this Act, or that the propagation material originates from such a

211

variety; • at the sale of propagating material for the purposes of

propagation or multiplication - uses a denomination which is different

from the variety in question; or uses the registered denomination of

another variety of the same species or subspecies of plant; or

uses a denomination which corresponds so closely to a registered denomination that is misleading;

• gives false information in any application or makes any false statement in evidence; or

• causes another person to take any action described in this section,

• commit an offence.

Remedies for infringement Section 51 further provides that:- (2) Any person who commits an offence under this Act and upon conviction shall be liable to a fine not exceeding five million shillings or to an imprisonment for a period not exceeding one year or to both that fine and imprisonment.


No direct relationship with any specific Act. However one is required to observe other national law which in one way or another has an indirect effect to the Act.


N/A Section 57 of the Act requires the Minister responsible for agriculture, after consulting the Minister responsible for finance, direct that, a certain percentage of the fees paid to the Registrar under the Act, be set aside for the benefits of traditional farmers and for preservation for traditional cultivars.


Public search of PVP registrations is yet to be enabled. Plans are underway to enable it through: www.agriculture.go.tz


Not yet effective


Yes

Any other additional information Section 48 of the PBR Act establishes a fund known as The Plant Breeders’ Rights Development Fund (PBR) aimed at assisting breeders who have less resource to develop new improved varieties. The Fund is administered by the Fund Committee through the PBR Office. The Fund is now operational.



212

Trademark


Yes


The Trade and Service Marks Act, 1986. The Government has initiated the process of amending the Act to be TRIPS compliant.


No




Address in Tanzania required. Priority claim allowed.


http://www.brela-tz.org


Trademark should be distinct, and in accordance with law, should not be non-registrable.

What can be registered Devices (logo) and words

What cannot be registered Marks that do not meet registration criteria

Forms required to fill and submit TM-1 for appointment of an agent TM-2 and TM-3 for application Details of the forms available at- http://www.brela-tz.org


Duration of protection (years) Seven years initially and can be renewed twice at a period of 10 years each.


Application for registration of Trade and Service Mark is filed with the office of the Registrar of Trade and Service Mark. Business Registration and Licensing (BRELA) Lumumba Street, Ushirika (TFC) Building’ 2nd – 4th Floors P.O Box 9393 , Dar es Salaam, Tanzania Tel: +255 22 2180114, 21801344 Fax: +255 22 2180371, Email:- [email protected] Website: http://www.brela-tz.org

Country: Tanzania



mailto:@cats-net.com


213


http://www.patentoffice.nic.in/ and https://124.124.220.66/etmr

Cost (approx.) 1 US $ = Tsh. 1200 Application fees Tsh. 50,000 Advertisement fees Tsh. 15,000 Association fees Tsh. 20,000 Registration Tsh. 60,000 Renewal Tsh. 30,000 Maintenance fees Tsh. 5,000 Disclaimer condition Tsh. 10,000



Expedited examination report within three months of such request made. Advertisement after six month of application. If there is no opposition, normally it takes around 12 to 18 months, though there is no fixed time limit for issuing certificate of registration.




6 months from the date of application

Renewal process / procedure Fill in prescribed forms

Opposition formalities Notice of opposition should be sent to the Registrar within 6 months from the date of publication.


No


--


N/A


N/A


--

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Chapter-13: IP Systems in Thailand

Patent


Yes.


The process to have a patent law in Thailand began in 1965 with the first patent law completed in 1979, the Patent Act B.E. 2522(1979). Two main supporting reasons for the bill were; (1) to promote the research and development of new inventions and designs that are useful to domestic agriculture, industry and commerce, (2) to offer legal protection to inventors and designers by prohibiting others from copying or imitating their intellectual innovations. ;; Even though Thailand drafted the 1979 Act in accordance to the general direction adopted by many developing countries, much criticism was drawn by many of Thailand's developed trading partners because some aspects of technology were not covered by the 1979 Act, such as the pharmaceutical and biotechnological innovations. The second phase of Thailand’s patent law evolution was initiated in 1990 with an intention to incorporate aspects of various international agreements and conventions in order to meet international standard. The 1979 Act was therefore amended and .became the Patent Act (No.2) B.E.2535(1992). Major improvements to the Act included, inter alia, the limitation of non-patentable subject matters, the longer term of protection, the expanded scope of protection, the compulsory licensing and the balance between the increased protection in pharmaceutical products and the assurance of the Thai public well being. The final Change to Thailand's patent law came when the Trade Related Aspects on Intellectual Property Agreement (TRIPS) was concluded in 1995. Principles of the TRIPS were added to the 1992 Act, including the national treatment, an improved compulsory licensing scheme, the abrogation of special measures for pharmaceutical patents, etc. The "Petty Patent", which is similar to the Utility Model, was introduced into the Act to cater for easier protection among the Thais. The final and present version to Thailand's patent law is the Patent Act (No.) B.E. 2542 (1999).


No


Yes


Yes, the followings are the qualifications of applicants: 1. Having Thai nationality or being a juristic person having its

headquarter in Thailand. 2. Having a nationality of a country, which is a member of the

convention or the international ^ agreement concerning the patent protection of which Thailand is also a member

3. Having a nationality of a country, which allows a natural

Country: Thailand

215

person of Thai nationality only juristic person having its headquarter in Thailand| apply for a patent in such country.

4. Having a domicile or a real and effective industrial or permanent establishment in Thailand member country of the convention or the international agreement concerning the patent protection of which Thailand is also a member.


www.ipthailand.org


Invention and product design

Inventions not patentable Plants and natural microorganisms

Forms required to fill and submit Form PI/PD/PP/001- Apply for a Patent/Petty Patent Form PI/PD/PP/001-A (Add) Statement of Applicant's Right to Apply For a Patent/Petty Patent Form PI/PD/PP/003- Editing the application for a Patent/Petty Patent application Form PI/PD/PP/004- Changing the type of claim for a Patent/Petty Patent application

Any special provisions/formalities Thailand has adopted the first-to-file systems, which is used in many other patent systems, by conferring exclusive rights to the application from the first filing date or priority date.

Duration of protection (years) Invention Patent The term of protection is non-renewable 20 years from the date

of filing the application in Thailand. However, it does not include period of time during the court proceedings of cases, where there are (i) a dispute between applicants regarding the "first to file" matter; (ii) an appeal against the order or the ruling of the Patent Committee to the court; (iii) a dispute between two or more persons who claim to be the inventors of invention being applied for a petty patent, where the applications are filed on the same day and the parties cannot agree who shall be entitled to the petty patent Petty Patent The term of protection is 6 years, which is extendable twice for 2 years at a time (total protection time of 10 years). The period of time during the court proceeding is applicable, mutatis mutandis, to the invention patent.


Patent Office, Department of Intellectual Property 44/100 Sanambin nam Road, Tumbol Bangkasor, Amphur Muang, Nonthaburi 11000, Thailand Tel: 66-2-5474621-25 Fax: 66-2-5474681


No

Cost (approx.) [1 US$ = THB 35] Applicable to natural persons (i.e. individuals)


in local currency


in US $

a)Registration Ranges from $ 43-143 same same

http://www.ipthailand.org/ipthailand/index.php?option=com_docman&task=doc_download&gid=1266&Itemid=353







216

THB 1,500 to 5,000

b)Examination

THB 500 $ 15 same same

c)Maintenance (renewal) Ranges from THB 1,000 to 280,000 per year or one payment

$ 29 to 8,000 same same

d) Others, if any -



Depends on the types of inventions approximately 5 years


1. Where the subject matter of a patent is a product, the right to produce, use, sell, have in the possession for sale, after for sale or import the patented product; 2. Where the subject matter of a patent is a process, the right to use the patented process, to produce, use, sell, have in the possession for sale, offer for sale or import the product produced by the patented process.


(1)Any act for the purpose of study, research, experimentation or analysis, provided that it does not unreasonably conflict with a normal exploitation of the patent and do not unreasonably prejudice the legitimate interests of the patent owner; (2) the production of the patented product or use of the patented process, provided that the producer or user, in good faith and without knowing or having no reasonable cause to know about the patent application, has engaged in the production or has acquired the equipment therefore prior to the date of filing of the patent application in Thailand, Section 19 bis not applicable hereto; (3) the compounding of a drug specifically to fill a doctor prescription by a professional pharmacist or medical practitioner, including any act done to such pharmaceutical product; (4) any act concerning an application for drug registration, the applicant intending to produce, distribute or import the patented pharmaceutical product after the expiration of the patent term; (5) the use of a device forming the subject of a patent in the body of a vessel or other accessories of a vessel of a country party to an international convention or agreement on patent protection to which Thailand is also party, when such a vessel temporarily or accidentally enters the waters of Thailand, provided that such a device is used there exclusively for the needs of the vessel; (6) the use of a device forming the subject of a patent in the

217

construction or other accessories of an aircraft or a land vehicle of a country party to an international convention or agreement on patent protection to which Thailand is also party, when such aircraft or land vehicle temporarily or accidentally enters Thailand; (7) the use, sale, having in possession for sale, offering for sale or importation of a patented product when it has been produced or sold with the authorization or consent of the patentee.




Opposition formalities Within ninety days following the publication of the application


A person who commits the acts that are within the scope of exclusive rights of a patentee without the patentee's authorization shall be held criminally liable. The claim stated in the patent plays a decisive role in dealing with the issue of infringement. The law requires the consideration of the characteristics of the invention and the design shown in the specification together with the drawing. The doctrine of equivalence is applicable in the Thai Patent Act, the preventing of exploitation of a patent by using slightly different materials or processes from those specified in the claim merely to evade the registered claim.

Remedies for infringement The Patent Act provides significant civil remedies to the patentee, as appeared in Article 77 of the Patent Act 1999. The patentee may seek a court's injunction to order another person to stop or refrain from doing the infringing act. The court; can order the infringer to pay damages to the patentee up to the amount the court deems appropriate relying on the adverse effect of the injury.


No


www.ipthailand.org


www.ipthailand.org


Yes

218


The Patent Act provides for forfeiture of patents under certain conditions. When patent protection is revoked, the exclusive rights on the patented invention pass on to the Government. The Board of Patents could cancel a patent if it was found that the patented invention was not being worked in the national economy within six years from the grant of the patent. Patentable Product Designs A product design must be novel in order to be patented: i.e., it must not fall under any of the following conditions: • A design widely known or used in Thailand before the filing of the patent application • A design picture, the subject matter or details of which have been displayed or disclosed in a document or printed publication inside or outside of Thailand before the filing of the application • A design that has been published in the patent journal under Section 65 and 28 before the filing of the patent application • A design that so nearly resembles any of the product designs indicated in the points described above that it is apparently an imitation. Product Designs Which Are Not Patentable • Product designs which are contrary to public order and good morals • Product designs prescribed by Royal Decree. Eligibility An inventor or product designer has the right to apply for a patent, as does a successor or assignee of the right. An assignment must be made in writing, signed by both the assignor and the assignee. If, during the course of employment, an employee or contractor creates an invention or product design, the right to apply for a patent belongs to the employer unless otherwise provided by agreement. The Patent Act requires that an applicant for a patent must be a Thai national or a national of a country which allows persons of Thai nationality to apply for patents in that country. The patent holder or applicant is entitled to the following rights: • A patent for an invention is valid for a period of 20 years from the date of filing the application; a patent for a product design is valid for a period of 10 years from the date of filing the application. The time during which court proceedings regarding the issuance of the patent are in process may be excluded.• During the period of the validity of the patent, the patent holder has the exclusive right to produce, use, sell, have for sale, offer for sale and import the patented invention or design. Any act performed before the patent is granted, that would otherwise constitute an infringement of the patent, is not deemed an infringement. • A patent holder has an exclusive right to use the words “Thai Patent”, or an abbreviation or translation thereof. • A patent holder may assign the patent to another holder. • A patent holder may grant a license to another person, subject to restrictions: – The patentee shall not impose upon the licensee any condition or restriction or any royalty covenant which is an unfair restraint of competition. Conditions, restrictions or covenants that unfairly restrain competition shall be prescribed by a Ministerial Regulation – A patent holder may not require a licensee to pay a royalty or royalties after the validity of the patent has expired – Conditions, restrictions, or royalties which are contrary to the above two points are null and void

• Any assignment or license must be in writing and officially registered.

219

Compulsory Licenses To discourage monopolies and the acquisition of patents simply to prevent other persons from manufacturing or producing the patented inventions or product designs, Section 46 of the Patent Act provides that:• At any time after the expiration of three years from the grant of a patent or four years from the date of filing an application for a patent, any person may apply to the Director-General for a compulsory license if, at the time of the application, it appears that: – For no legitimate reason, there is no production of the patented product nor application of the patented process in the country – For no legitimate reason, there is no sale of the product produced under the patented process or there

are sales of the same at unreasonably high prices or in quantity insufficient to domestic public demand. Foreign Patents A foreign patent that has not been granted a separate patent in Thailand receives no protection under the Patent Act. However, foreign patent holders or owners of rights to inventions or designs in foreign countries may enter into business transactions with parties in Thailand and seek equivalent protection through contractual obligations in the form of a licensing agreement. Since foreign patents, inventions and designs receive no protection under the Patent Act, no civil or criminal action can be taken against a third party who produces products or sells a patented product in Thailand without paying fees to the holder of the foreign patent or who applies in Thailand for a patent on an invention or design already patented in other countries. Nevertheless, legal solutions to such conflicts may be available under separate legislation.

220



Yes


Plant Varieties Protection Act BE 2542 (1999). Entered to force in 2003


The Act gives the rights-holder of a new plant variety the sole right to produce, sell or distribute, import, export, or possess it for the aforementioned purposes


No


Foreign applicants are eligible to apply for registration of protection of a plant variety under any of the following conditions: • Applicant is a national of a country which allows Thai nationals or juristic persons with head offices in Thailand to apply for protection in that country. • Applicant is a national of a country which is a party to an international convention or agreement on the protection of plant varieties to which Thailand is also a party. • Applicant is domiciled or conducts a real and effective industry or business in Thailand or in a country which is a party to an international convention or agreement on the protection of plant varieties to which Thailand is also a party.


www.doa.go.th [email protected]


New, extant variety, Communities’ variety and essentially derived variety (EDV).


Yes. As of section 14 of the Act, so far, 48 crops are notified; Mango, Rice, Orchid: Dendrobium spp., Sugarcane, Bird sweet or Bell Pepper, Bitten Cucumber, Cucumber, Chinese Kale, Crown of Thorns, Crested Euphorbia, Corn, Mung bean, Pak Choi, Soy bean, Tomato, Vetiver grass, Watermelon, Water Convolvulus, Yard long bean, Curcuma spp, Durian, Litchi, Longan, Papaya, Pomelo, Tapioca, Lime, Lotus & waterlily, Rambutan, Sugar apple, Tangerine, Tamarind, Orchid: Vanda spp , Eucalyptus spp., and Anthurium spp.

Protection criteria (DUS etc.) Novelty- variety should not have been sold both in Thailand and abroad prior to one year of application.

Country: Thailand

http://www.doa.go.th/

221

Distinctness- having the particular features distinct from other varieties in respect of shape or appearance, or having any characteristic resulting from the expression of the genotype distinct from other plant. Uniformity - being of uniformity in the particular features of the variety in respect of shape and appearance or in respect of other characteristics resulting from the expression of the genotype specific to such plant variety. Stability- being stable in the particular features of the variety which are capable of expressing such particular features in every cycle of the production of the propagating material of such plant.

What cannot be protected A new plant variety that have a severely adverse impact, directly or indirectly, on environment, health or public welfare.

Forms required to fill and submit Form K.P. 1 for general information of the application Form K.P. 1/1 for breeders’’ information Form K.P. 1/2 for history of breeding for the variety Form K.P. 1/3 for major characteristics of the variety

Any special provisions/formalities The application for registration of a new plant variety shall be in accordance with the rules and procedure prescribed in the Ministerial Regulation. An application shall have the following particulars:

• the name of the new plant variety and particulars of essential features of the new plant variety;

• the name of the breeder participating in the breeding or developing the new plant variety;

• details showing the origin of the new plant variety or the genetic material used in the breeding of the variety or in the development of the new plant variety, including its breeding process, provided that details enabling clear comprehension of such process shall also be included;

• a statement that the propagating material of the new plant variety in respect of which the application for registration has been filed and the genetic material used in the breeding or in the development of the new plant variety under 3 will be furnished to the competent official for the purpose of examination thereof within the time specified by the competent official;

• an profit-sharing agreement in the case where a general domestic plant variety or a wild plant variety or any part thereof has been used in the breeding of the variety for a commercial purpose;

• Other items of particulars as prescribed in the Ministerial Regulation.

Duration of protection (years) The certificate of registration of a new plant variety shall be valid

for the following terms: • Twelve years for the plant which is capable of giving such

fruits as expected of the specific features of the variety after the cultivation of its propagating material within the period of not over two years.

• Seventeen years for the plant which is capable of giving such fruits as expected of the specific features of the variety after the cultivation of its propagating material within the period of over two years.

222

• Twenty seven years for the plant which is of tree-based utilization and capable of giving fruits in accordance with the specific features of the variety after the cultivation of its propagating material within the period of over two years.

• The term of the certificate of registration of the new plant variety under paragraph one shall commence as from the date of its issuance.


Plant Varieties Protection Division Department of Agriculture Phaholyothin Road , Chatuchak, Bangkok , Thailand Tel: 66-2-561-4665, 02-940-7214 , Fax: 66-2-561-4665 www.doa.go.th [email protected]


No



in local currency


in US $

a)Registration

THB 1,600 $ 46 same same

b)Examination

Ranges from THB 2,000 to 10,000

$ 57 to 286 same same

c)DUS Test

Ranges from THB 20,000 to 40,000

$ 570 to 1,143 same same

d) Maintenance (renewal) THB 1,000 $ 29 same same

e) Others, if any The cost of DUS testing would be decided on the case to case basis. If the breeders carry out the test on their own premises, they would pay only the DSA to examiners for onsite inspection.

Deposit requirements, if any Yes, both candidate and similar varieties, an amount depends on varieties to be tested for DUS.


Depending on crops: ornamental crops and vegetables are at least 1.5 to 2 years, fruit crop and perennial tree more than 2 years.


The right holder of a new plant variety has the exclusive right to produce, sell or distribute in any manner, import, export or possess for the purpose of any of the said acts the propagating material of the new plant variety.

Farmers’ rights A farmer who has bred or developed a new variety shall be entitled to registration and other protection in similar manner to a registered breeder of a variety. A farmer or any person, residing and commonly inheriting and passing over culture continually, who takes part in the conservation or development of the plant variety which is a plant variety existing only in a particular locality within the Kingdom or a plant variety not registered as a new plant variety may register as a community under this Act.


223

Exemptions to farmers, if any Farmers and researchers can use a protected new varieties for the following circumstances:

• the act without an intention to use it as propagating material;

• the education, study, experiment or research relating to a protected new plant variety for the purpose of breeding or developing plant varieties;

• the cultivation or propagation by a farmer of a protected new plant variety from the propagating material made by himself, provided that in the case where the Minister, with the approval of the Commission, publishes that new plant variety as promoted plant variety, its cultivation or propagation by a farmer may be made in the quantity not exceeding three times the quantity obtained;

• the act for non-commercial purpose; • the sale or distribution by any means, importation or

exportation of, or having in possession for the purpose of any of the aforesaid activities, the propagating material of the protected new plant variety which has been distributed by the right holder or with the right holder's consent.

Research exemptions As stated above Other information Date of priority and requirements

1. A plant variety the propagating material of which has not been exploited, whether by means of sale or distribution in any manner whatsoever, in or outside the Kingdom by the breeder or with the breeder’s consent for more than one year prior to the date of filing the application 2. Application has to be made in Thailand within one year as from the date of the first filing of the application outside the Kingdom, make a request for having the date of first filing of the application for registration of the new plant variety outside the Kingdom specified as the date of filing of the application for registration of the new plant variety in the Kingdom, provided that the country in which the first filing of the application has been made grants the similar right to Thai nationals and the applicant is of the nationality of such country.

Renewal process / procedure --

Opposition formalities Within 90 days during the publication period and 100 THB per application of objection.


In the case where there is an infringement of the right of the right holder of a new plant variety or the right holder of a local domestic plant variety to produce, sell or distribute in any manner, import, export or possess for the purpose of any of the said acts the propagating material of the new plant variety as the case may be, the Court has the power to order the person committing the infringement to pay the right holder such amount of compensation as the Court deems appropriate, having regard to the gravity of the damage and loss of benefits, as well as the costs necessary for t h e e n f o r c e m e n t o f r i g h t s o f t h e r i g h t h o l d e r .

224

Remedies for infringement The Act provides criminal remedies as appeared in section 63 and 64 for the infringer in two cases.

1. Any competent official, having the responsibility in connection with registration of new plant varieties for protection thereof, unlawfully or without consent of the applicant for registration, uses or allows other persons to use or gives to other persons the propagating material of the new plant variety or the genetic material which has been presented to him as in the statement under section 19 (4) shall be liable to imprisonment for a term not exceeding two years or to a fine not exceeding four hundred thousand Baht or to both.

2. Any person who commits any act without authorization from the right holder of the plant variety shall be liable to imprisonment for a term not exceeding two years or to a fine not exceeding four hundred thousand Baht or to both.


The Plant Quarantine Act. For import seeds for DUS testing.


A person who collects, procures or gathers general domestic plant varieties, wild plant varieties or any part of such plant varieties for the purposes of variety development, education, experiment or research for commercial interest shall obtain permission from the competent official and make a profit-sharing agreement under which the income accruing therefrom shall be remitted to the Plant Varieties Protection Fund in accordance with the rules, procedure and conditions prescribed in the Ministerial Regulation.

The profit-sharing agreement shall at least have the following particulars:

1. the purposes of the collection and gathering of the plant variety;

2. the amount or quantity of samples of the intended plant variety;

3. the obligations of the person to whom permission is granted;

4. the stipulation as to intellectual property rights in the products which result from the development, study, experiment or research of or into the plant variety and which are derived from the use of the plant variety under the agreement;

5. the stipulation as to the amount or rate of, or the term for, the profit-sharing under the profit-sharing agreement in respect of products derived from the use of the plant variety thereunder;

6. the term of the agreement;

7. the revocation of the agreement;

8. the stipulation as to the dispute settlement procedure;

9. other items of particulars as prescribed in the Ministerial Regulation.

Amount of payment would be negotiated among the working group and the breeder on case by case basis.




225




Yes


Thailand enacted the plant variety Protection Act B.E. 2542 in 1999. The act is designed to encourage breeders to cultivate and breed new plant varieties, promote appropriate mechanism for the enforcement of the rights of local communities and breeders for access to biological resources, and maintain genetic diversity in the field. As there is nothing in the TRIPs agreement that prevents the inclusion within the system fulfilling article 27.3(b) of other subject matter or combining the same with other instrument of protection. In this respect, Thailand’s sui genseris system for plant varieties has three implementation scenarios:

• Protection of new plant varieties • Protection of general domestic plant varieties, and wild plant varieties. • Protection of local domestic plant (a plant variety existing in a particular locality with in the country

and a plant variety not registered as a new plant variety). • Whoever collects the general domestic plant varieties, wild plant varieties and local domestic plant

for commercial purpose shall make a benefit sharing in relation to the profits derived from the use of such plant to the PVP Fund and to the community.

It seems to be that Thailand’s PVP system is a combination between the Convention of Biological Diversity and UPOV. Even though Thailand has not yet been the member of UPOV, the provision under PVP act regarding the protection of new plant variety somewhat conform to the 1997 act of UPOV. Unfortunately, the act is no longer open for accession.


226

Copyright


Yes


Copyright Act B.E. 2537 (1994)

The evolution of Thai copyright system started from B.E. 2435 (1892) with the proclamation of the Announcement of the Vachirayan Royal Library which was initially applicable to domestic works.

The Thai copyright law moved to international level in 1931 when the legislation named "the Act for the Protection of Literary and Artistic Works B.E. 2474" was enacted and Thailand officially acceded to the Berne Convention for the Protection of Literary and Artistic Works 1886, revised in Berlin in 1908 and Additional Protocol in 1914.

After forty-seven years of enforcement, the Act for the Protection of Literary and Artistic Works B.E. 2474 was repealed and replaced by "the Copyright Act B.E. 2521" in 1978. Later on, in 1994, the Copyright Act B.E. 2537 was passed to repeal the former Act. This Act has been in force since 21 March B.E. 2538 (1995)


Thailand is presently a member of the TRIPs Agreement and the Berne Convention for the Protection of Literary and Artistic' Works, Paris Act 1971. The Copyright Act B.E. 2537 conformed to the aforementioned international standards.


none


www.ipthailand.org


The work created by the author


The Copyright Act B.E.2537 granted protection to 9 categories of works as follows:

• literary work e.g. books, speeches, computer programs, etc.

• dramatic work e.g. choreography, dancing, acting, pantomime, etc.

• artistic work e.g. painting, sculpture, lithograph, architecture, photograph, map, applied art, etc.

Country: Thailand

227

• musical work e.g. melody, lyrics and melody, musical diagram, etc.

• audiovisual work e.g. VDO, VCD and DVD • cinematographic work • sound recording e.g. cassette and CD; • broadcasting work means a work which is communicated

to public on radio, television or any other similar means. • any other works in the literary, scientific or artistic domain.


Names of products or services , names of businesses, organizations, or groups

Forms required to fill and submit CR 01 that available on website

Any special provisions/formalities • The following are those who can be protected by copyright:

• The person who creates copyright work without being employed, commissioned or controlled as to the creation of the work;

• The person who creates copyright work in the course of employment unless being otherwise agreed in writing;

• The employer who in the course of commission, commissions a contractor author to create a copyright work.

• Government or local agencies in case of copyright works being created in the course of employment, order or control, unless being otherwise agreed in writing.

• The person who makes an adaptation of a copyright work with the consent of the original copyright owner;

• The person who makes a compilation or a composition of copyright works with the consent of the original copy right owner or who makes a compilation or a composition of data or the material which are readable/or conveyable by a machine or the apparatus, and by reason of the selection or arrangement of their contents constituting intellectual creations.

• The assignee of a copyright work. Duration of protection (years) • In general, copyright endures for the life of the author and

fifty years after the death of the author. • For a photographic work, an audiovisual work, a

cinematographic work, a sound recording or an audio or video broadcasting work, copyright endures for fifty years as from the authorship or the first publication of the work as the case may be.

• Copyright in a work of applied art endures for twenty-five years as from the authorship of the first publication of the work as the case maybe.

• In the case of the author being „ a juristic person, copyright endures for fifty years as from the authorship or the first publication of the work as the case may be.

• Copyright protection subsists upon creation of the work without the requirement of registration or any other condition.

• The copyright notification is merely government service, being purported to correct copyright information for the notifying author to use as a prima facie evidence in litigation, but it has no legal effect with respect to legal

228

protection of copyright. • The Copyright Act B.E. 2537 also protects performers

such as a performer, musician, vocalist, choreographer, dancer, and a person, who acts, sings, speaks, narrates or performs in accordance with the script, or performs in any other manner.


Copyright Office, Department of Intellectual Property 44/100 Sanambin nam Road, Tumbol Bangkasor, Amphur Muang, Nonthaburi 11000 Tel: 66-2-5474621-25 Fax: 66-2-5474651


Yes www.ipthailand.org



in local currency


in US $

a)Registration

- - - -

b) Maintenance (renewal) - - - - c) Others, if any - - - -

Deposit requirements, if any No


1 week


Copyright owners are conferred with two sets of right protection: economic rights and moral rights. A. Economic rights consist of then following rights:

1. Reproduction and adaptation; 2. Communication to the public; 3. Letting for hire of the original or the copies of a

computer program, an audiovisual work, a cinematographic work and sound recording;

4. Giving benefits accruing from the copyright to other persons;

5. Licensing the right mentioned in 1, 2 or 3. B. Moral rights consist of the following rights: 1. identifying himself as the author; 2. prohibiting the assignee or any person from distorting, shortening, adapting or doing anything with the work to the extent that such act would cause damage to the reputation or dignity of the author

Exemptions The Copyright Act. B.E. 2537 allows the public to use the

copyright work without authorization from the owner of copyright in certain circumstances stipulated in the law. The exception of copyright infringement is made to adjust the balance of interest between the copyright owner and the society. In specific circumstances, such as research or study of the work, not being for profit, exceptions of copyright infringement is to be under the following two main conditions: 1. Not conflict with a normal exploitation of the copyright work by the owner of copyright;

229

2. Not unreasonable prejudice toward the legitimate right of the owner of copyright. Section 32 of the Act provides the exceptions from copyright infringement. It states that a copyright-related action which is not an exploitation of the work and does not render negative impact on the legitimate right of the copyright owner is not considered an infringement of copyright. For example, such actions include using for personal benefit, using as questions in an examination as well as not-for-profit research, teaching, studying, commenting, criticizing and reporting with an acknowledgement of the copyright ownership of the work.


None



Copyright infringement occurs when one of those rights are used without the express consent of the copyright owner. The provisions on infringement of copyright are in part 5 of the Copyright Act B.E. 2537 (1994). Sections 27-31 provides that reproduction or adaptation, communication to public, letting of the original or copies, re-broadcasting, selling, distributing and importing the copyright work are considered an infringement of copyright.

Remedies for infringement Penalties The fine for copyright infringement ranges from 20,000 up to 200,000 Thai baht. In addition, if the offense was committed for commercial purpose, the offender will be imprisoned for a term of 6 months up to 4 years or will be fined 100,000 up to 800,000 baht or both imprisoned and fined. As for the case of indirect infringement such as selling, distributing and importing copyright violated items, the offender will be imprisoned for a term of 3 months up to 2 years or will be liable to a fine from 50,000 to 400,000 baht or both. In the case that a wrongdoing is made within 5 years after being discharged from the penalty, the double penalty will be imposed.



--


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Y


--

230



Yes.


Thailand enacted the Geographical Indications Act B.E. 2546 (Act) in October 2003. The Act was published in the Government Gazette (Volume No. 120, Part 108 Kor.) on October 31 2003 and came into effect on April 28 2004.


Consumer Protection Act B.E. 2522, as revised by the Consumer Protection Act (2nd Edition) B.E. 2541 also provides protection to Geographical Indication. However, the principle and rationale of this act are to mainly provide protection to the consumers. That is, in some case, the words used do not confuse the consumers or do not mislead the consumers about the source of origin, for example, by using Geographical Indication together with the indication of the real source of product as stated in the case of the Criminal Law above. This action may damage other sellers but it does not damage the overall society, and hence it is not an offence according to this Act. However, when commercial consideration is made, such case represents an unfair trade competition. Business operators who actually have the right in using Geographical Indication should have the right to be protected of their benefits from their products’ reputation and goodwill.


The right-holder of the geographical indication protected abroad will be entitled to apply said geographical indication for registration in Thailand, if he/she:

1) has a contact office in Thailand; 2) has a genuine business office or has domicile or is a citizen

of the country of the applied geographical indication; 3) has evidence proving that the subject geographical

indication is being protected under the law of the foreign country.

Moreover, a foreign GI application geographical indication is protected under the law of such country has been used continuously until the date of filing an application for registration in Thailand.


www.ipthailand.org


Provides protection to the names, symbols, or marks that indicate the source of product origin to be registered as Geographical Indications.

Grounds for refusal of registration The right of use mentioned above can be suspended by the registrar if the users fail to comply with the conditions as

Country: Thailand

231

registered. The Registrar may send written notice requiring such person to comply with the conditions within a specified period of time. But if such person still fails to comply with the conditions without proper reason within such period of time, the Registrar may issue an order in writing to suspend the use of the geographical indication by such person for a period not exceeding 2 years from the date of receiving the order.

Forms required to fill and submit 1. Form Sor Chor 01 - application for registration of Geographical Indication 2. Form Sor Chor 02 - opposition against registration of Geographical Indication 3. Form Sor Chor 03 - counter-statement in response to the opposition against registration of Geographical Indication 4. Form Sor Chor 04 - appeal against the order or decision of the registrar 5. Form Sor Chor 05 - request for adjustment or revocation of Geographical Indication registration 6. Form Sor Chor 06 - request for suspension of the use of Geographical Indication 7. Form Sor Chor 07 - request for examination of registration and other requests

Any special provisions/formalities For a geographical indication of foreign country to enjoy the protection under this Act, there must be explicit evidence that such geographical indication is protected under the law of such country and has been used continuously until the date of filing an application for registration in Thailand. The following persons shall be eligible to apply for registration of a geographical indication: 1. Government agency, public body, state enterprise, local administration organization or other state organization which is a juristic person having area of responsibility covering the geographical origin of the goods. 2. Natural person, group of persons or juristic person engaging in trade which is related to the goods using geographical indication and domiciled in the geographical origin of the goods. 3. Group of consumers or organization of consumers of the goods using geographical indication. Persons applying for registration of Geographical Indications must prepare the application together with the following information: 1. Details concerning the applicant according to the list in the printed form provided; 2. Name, symbol, or any other thing that is used to call or represent a geographical origin; 3. List of products using such Geographical Indication; 4. Details concerning quality, reputation, specific characteristics or features of products using Geographical Indication; 5. Details showing the linkage between the products using Geographical Indication and geographical origin; 6.Details concerning the geographical location being applied for registration; 7. Details on the use of Geographical Indication on the product label; 8. Details concerning persons responsible for verifying the Geographical Indication registered products.

232

Duration of protection (years) A GI registration is valid from its registration date until it is cancelled. The registration date is the date on which the application was filed.


Geographical Indication Office, Department of Intellectual Property 44/100 Sanambin nam Road, Tumbol Bangkasor, Amphur Muang, Nonthaburi 11000, Thailand Tel: 66-2-5474621-25 Fax: 66-2-5474681 www.ipthailand.org


No



in local currency


in US $

a)Registration

THB 1,000 $ 29 same same

b) Maintenance (renewal) nil nil nil nil c) Others, if any 1. Opposition to registration of geographical indication 1,000 baht

each 2. Appeal against order or decision of the Registrar 1,000 baht each 3. Application for amendment of registration of 200 baht each geographical indication 4. Application for revocation of registration of 200 baht each geographical indication 5. Other applications 200 baht each



Not applicable


When registration of geographical indication has been affected for any goods, the manufacturers of the goods in the geographical origin of the goods or persons engaging in trade related to the goods shall be eligible to use the registered geographical indication with the goods as specified in accordance with the conditions prescribed by the registrar. It is noticeable that only manufacturers have to be in the geographical origin. Persons engaging in trade do not have to be in the geographical origin since trading of goods can be conducted everywhere. The right of use mentioned above can be suspended by the registrar if the users fail to comply with the conditions as registered. The Registrar may send written notice requiring such person to comply with the conditions within a specified period of time. But if such person still fails to comply with the conditions without proper reason within such period of time, the Registrar may issue an order in writing to suspend the use of the geographical indication by such person for a period not exceeding 2 years from the date of receiving the order.


There are two level of protection of the Act: 1. Special Protection Level: for wines and spirits: This prevent the use of a geographical indication identifying wines or spirits for

233

the products not originated in the in place indicated by such geographical indication, although such use does not confuse the public. Furthermore, the use of such expression as “kind” or “type” or the like is also prohibited.

2. Normal Protection Level: This level of protection is used with general products and aims to prevent against the use of names in the manner that may confuse the public.


Nil


Nil

Opposition formalities Within ninety days from the date of publication, an interested person may file an opposition against the registration of geographical indication applied to register.


The following acts shall be deemed unlawful: 1. The use of a geographical indication to show or mislead other persons that the goods not originating from the geographical origin specified in an application for registration are goods originating from that geographical origin. 2. The use of a geographical indication in any manner which causes confusion or misunderstanding as to the geographical origin of the goods and the quality, reputation or any other characteristic of the goods so as to cause damage to other traders. If the act under 1 is done before the date of registration of the geographical indication, it shall be deemed lawful.

Remedies for infringement Protection of Geographical Indications is rather different than other kinds of Intellectual Property in that the community in such locality has the right for the used of Geographical Indications being applied under the name of the government sector or business operators or consumers. Since it is not the right of any person in particular, thus there is no unlawful act from violation against Geographical Indications However, this Act stipulates the penalties for the following unlawful acts:

1. The unlawful use of a Geographical Indication to mislead other persons that the goods not originating from the geographical origin specified in the application for registration are goods originating from that geographical origin, or to cause confusion or misunderstanding as to the geographical origin of the goods, shall be unlawful and subject to a fine no exceeding 200,000 Baht.

2. When there is announcement of any type of goods as specific goods, the use of the geographical indication with the goods not originating from the geographical origin specified in the application for registration shall be unlawful and subject to a fine no exceeding 200,000 Baht .

In case that a person who commits an offence punishable under this Act is a juristic person, the managing director, manager or representative of such juristic person shall also receive a punishment as prescribed for such offence, unless it can be

234

proven that such persons were not cognizant of nor consented to the commission of such offence of the juristic person. However, the offences stipulated in this Act are subject to a fine only, not to an imprisonment.


Consumer Protection Act.


Nil


http://www.ipthailand.org/ipthailand/index.php


http://www.ipthailand.org/ipthailand/index.php


Legal protection of Geographical Indication is the right of communities.

• The names of Geographical Indication products to be registered must be known among the

consumers and have been used before. Such names cannot be initiated particularly to be registered.

• Persons who have lawful rights to use Geographical Indication are producers or manufacturers of such products in that particular area and business operators involved in such products (not only the persons who have been registered).

235

Trademark


Yes


Being an agricultural economy, the first trademark law in Thailand, the Law on Trademark and Trade Names of B.E.2457 (1914) was promulgated by the Trademark Registration Office, the Ministry of Agriculture. During such time, foreign governments wanting trademark protection must integrate the matter into the bilateral treaty with Thailand.

Only until the reign of King Rama IV and the increased trade with the West, The Department of commercial Registration, Ministry of Commerce was established in 1923 with one of its duties as the registrar of trademark.

The law underwent its first review in 1931 under the influence of the British Trademark Act of 1905 and rewritten the Trademark Act B.E.2474 (1931). During its long enforcing period, it was amended twice in 1933 and 1961, in order to adapt to the ever-changing world of trade.

In order to keep pace with the commercial development, to provide sufficient protection to the nark owners, and to be concurrent with foreign laws, a new trademark law was drafted with the provisions 3f the Paris Convention in mind and enacted in 1991 the Trademark Act of B.E.2534 (1991 A.D.)

There were 4 major developments in this new aw, namely; (i) the inclusion of "Service Marks", 'Collective Marks" and "Certification Marks"; (ii) the increase in authority of the registrar in order to 3xpe-dite the registration process; (iii) the inclusion 3f criminal sanctions in order to effectively deter infringement; and (iv) the establishment of the Department of Intellectual Property to oversee the registration and the administration of trademarks.

The final changes to the Act came after the conclusion of the Uruguay Round Negotiation of the General Agreement on Tariff and Trade (GATT). The trademark


No


Yes


No

Country: Thailand

236


www.ipthailand.org


Protects a symbol used in connection with goods for the purpose of indicating that they are the goods of the owner of the trademark. The trademark must be “distinctive” and not identical or similar to those registered by others, and must not be prohibited by section 8 of the Trademark Act of 1991. It is the most important requirement because it ensures that a trademark distinguish one trademark bearing goods from the others. Thailand recognizes both the "inherent distinctiveness" and the "distinctiveness acquired through use", where the latter is defined as a character which allow the public to distinguish registered goods from other.

What can be registered Trademark A mark, which is used only in association with goods, is classified as a trademark. It must fulfill the characteristics defined by the laws, which include both the appearance and the purpose of its use. Service Mark A service mark is a mark used or proposed to be used upon or in connection with a service to distinguish the service using the service mark of the proprietor of such service mark form the service using another person's service mark. Certification Mark A certification mark is a mark used or proposed to be used by its proprietor on or in connection with another person's goods or services to certify the origin, composition, method of production, quality A other characteristic of such goods or to certify the nature, quality, type or other characteristics of the services. Collective Mark A collective mark is a trademark or a service mark used or proposed to be used by companies or enterprises of the same group or by members of an association, cooperative, union, federation, group or person of other government or private organization. Criterion for Trademark A trademark must be visible and distinctive. The purpose of the mark must also be well specified and specific to the subject matter for which the trademark is used.

What cannot be registered -- Forms required to fill and submit Form 01- A - Apply for a Trademark

Any special provisions/formalities A trademark may be registered even if it is not being actively used.

However, failure to utilize the trademark entitles third parties to challenge the rights of the trademark owner.

Duration of protection (years) Trademark registration is effective for a period of 10 years. Owners of trademarks must file an application for renewal at least 90 days prior to the expiration of their current trademark


237

registration. A renewed trademark will be effective for an additional 10 years. A trademark may be registered even if it is not being actively used. However, failure to utilize the trademark entitles third parties to challenge the rights of the trademark owner.


Trademark Office, Department of Intellectual Property 44/100 Sanambin nam Road, Tumbol Bangkasor, Amphur Muang, Nonthaburi 11000, Thailand Tel: 66-2-5474621-25, Fax: 66-2-5474681


Yes, www.ipthailand.org



in local currency


in US $

a)Registration

THB 3,000 $ 86

b)Maintenance (renewal) THB 1,000 per year

$ 29

d) Others, if any Deposit requirements, if any None


3 months


The owner of a registered trademark has the exclusive right to use the trademark, and may initiate legal action against violators. It is a criminal offense to represent a trademark as registered when it has not been legally registered, or to sell, possess for sale, or bring into the Kingdom objects under such a pretense.


--

Renewal process / procedure Trademark registration is effective for a period of 10 years. Owners of trademarks must file an application for renewal at least 90 days prior to the expiration of their current trademark registration. A renewed trademark will be effective for an additional 10 years.

Opposition formalities -- Any relationship with other legislations in your country

None


Anyone who forges and/or imitates another person’s registered trademark in order to mislead the public into believing the imitation mark is that of the registered owner, or who sells, possesses for sale, or brings into the Kingdom objects with an imitated trademark

Remedies for infringement This offense is punishable by imprisonment of up to one year or a fine of up to 20,000 baht, or both. Presenting false evidence while

238

registering a trademark is liable to a term of imprisonment not exceeding six months or a fine not exceeding 10,000 baht, or both. Anyone who forges another person’s trademark, registered in the Kingdom, or who sells, possesses for sale, or brings into the Kingdom objects with a forged trademark, shall be punishable by imprisonment not exceeding four years or a fine not exceeding 400,000 baht, or both. Anyone who imitates another person’s registered trademark in order to mislead the public into believing the imitation mark is that of the registered owner, or who sells, possesses for sale, or brings into the Kingdom objects with an imitated trademark, will be punishable by imprisonment not exceeding two years or a fine not exceeding 200,000 baht, or both. Whoever repeats these offenses within a five-year period is liable to double punishment.


www.ipthailand.org


www.ipthailand.org


As of February 1992, these variations on trademarks are covered under all the provisions the Act and, hence, receive the same protection as trademarks under the law. In the case of service marks, all the words “goods” mentioned in the Act’s provisions shall mean “services”.

Certification Marks

Applicants for certification marks must forward a copy of the regulations concerning the use of the certification mark together with the application for registration and demonstrate that they are well qualified to certify the merits of the goods or services.

The owner of a registered certification mark shall not use it for his own goods or services and shall not license any third person to grant certifications to use the mark, although they may license a third person to use the certification mark themselves. If they violate this rule, they are subject to a fine not exceeding 20,000 baht.

The regulations concerning the use of the certification marks must:

• Specify the origin, composition, manufacturing process, quality and other characteristics of the goods and services to be certified.

• Include the rules, procedures and conditions in the granting of a license to use the certification mark.

239

Designs


Yes


Protection of Layout-Designs of Integrated Circuits Act, B.E. 2543 (2000)


Patent Act.


the Act requires the applicant for protection to be a Thai national or juristic person whose principal office is in Thailand, or a national of a country party to an international convention on the protection of integrated circuits to which Thailand belongs, or who is domiciled in or has an effective establishment for circuit design the Act requires the applicant for protection to be a Thai national or juristic person whose principal office is in Thailand, or a national of a country party to an international convention on the protection of integrated circuits to which Thailand belongs, or who is domiciled in or has an effective establishment for circuit design.


www.ipthailand.org , Tel. 66-2547-4637


1. A layout-design which a designer has created by himself and is not commonplace in the integrated circuit industry; 2. A layout-design which a designer has created by combining elements, interconnections of layout-designs or integrated circuits that are commonplace in the integrated circuit industry in a way of resulting in the new layout-design which is not commonplace in the integrated circuit industry.


A layout-design of an integrated circuit refers to any patterns, layouts, or images, however expressed, made for the purpose of displaying the interconnection of an integrated circuit.


product design

Forms required to fill and submit Complete Form BorPhor 1, BorPhor 1 (Por), or BorPhor 1 (Add). An application for the registration of a layout-design of an integrated circuit, which must be signed by the applicant or his representative. In cases where the applicant is the designer of the layout-design

Country: Thailand

http://www.ipthailand.org/

240

then he must submit the right to register the layout-design of the integrated circuit, or in cases where the application is a foreigner, form BorPhor (Add) must be used.

Any special provisions/formalities As addressed in section 15 of the Act, an application for registration must at least have the following particulars : 1. name, nationality, domicile and address of the designer as well as any assignment of a right to apply for protection, provided that there is such an assignment; 2. the date of creation of the layout design and the date of a first commercial exploitation thereof including description of the commercial exploitation; 3. a painting or photograph of drawing identifying the layout-design or other articles producing the like result, including data on electronic function of the integrated circuit; 4. a sample of an integrated circuit in which the layout-design is incorporated, in the case where it has been commercially exploited; and 5. other particulars as prescribed in the Ministerial Regulation.

Duration of protection (years) The term of protection under the layout-design certificate shall be for a period of 10 years from the date of filing the application for registration or the date of the first commercial exploitation, whichever shall first occur, but shall not exceed fifteen years as from the date of the completion of the layout-design’s creation. Essentially, this means that a person cannot apply for a registration of a layout-design which has been created more than 15 years, even though he never used the layout-design for commercial purposes


Department of Intellectual Property 44/100 Nonthaburi 1 Rd., Bangkrasor, Muang Nonthaburi , Thailand 11000 http://www.dip.moc.go.th/ipthailand/index.php, www.ipthailand.org Tell: (66)25474621 to 5, Fax: (66)25474696


No



in local currency


in US $

a)Registration

THB 2500 $ 72 same same

b) Maintenance (renewal) Ranges from THB 1,500 to 52,500 per year or 20,000 for one payment

$ 43 to 1,500 per year or 570 for one payment

same same

c) Others, if any - Deposit requirements, if any Nil Length of processing and release of Certificate (approx.)

Not applicable


The right-holder has the exclusive right to reproduce, import, sell or distribute in any manner for commercial purposes his protected circuit design, an integrated circuit containing his

http://www.dip.moc.go.th/ipthailand/index.php

241

protected circuit design, or a product incorporating such integrated circuit. However, reproduction for use in the course of evaluation, analysis, research or education, or reproduction for one's own benefit and not for commercial purposes, will not be held as an infringement of the right of the right-holder.


If the circuit design has been exploited commercially within or outside of Thailand, an application for registration must be filed within two years from the date commercial exploitation first took place. It should also be noted that circuit designs not commercially exploited within fifteen years from creation can not be registered. The right to a circuit design is protected once registration is granted and a certificate issued.

Renewal process / procedure The right holder shall pay an annual fee as prescribed in the Ministerial Regulation as from the second year of the term of protection of the layout-design and the payment shall be made within sixty day as from the commencement of the second year and of every year thereafter.


Any of the following acts are not to be taken as infringements : 1. the reproduction for the purpose of evaluation, analysis, research or education; 2. the reproduction for the interest of oneself which is not an act for commercial interest; 3. a layout-design or an integrated circuit lawfully acquired from the commercial exploitation of the right holder; 4. an integrated circuit in which the protected layout-design of the right holder is incorporated or in respect of a product incorporating such integrated circuit; provided that the person committing it did not know or had no reasonable ground to know, at the time of acquiring such integrated circuit or product that the layout design infringing the right holder's rights was incorporated. In such case, the person committing it may, after being notified that such integrated circuit or product incorporates the layout-design infringing the right holder's rights; 5. a layout-design or an integrated circuit lawfully acquired from the commercial exploitation of the right holder; 6. person who created a layout-design identical to a layout-design in respect of which the right holder is accorded protection, provided that he has independently created it by himself.

Opposition formalities Within one year as from the date of the publication of the registration of the layout


An infringement of eligible layout rights occurs when a person, acting without the owner’s authority, does anything substantially falling within the scope of the owner’s exclusive rights: though the right of commercial exploitation is only infringed if the person knows or should reasonably know that the owner has given no authorization.

Remedies for infringement For the penalties of the Act, anyone reproducing a protected circuit design without the permission of the right-holder is liable to a fine from Baht 50,000 to Baht 500,000. Any infringer importing,

242

selling or distributing for commercial purposes a circuit design is liable to a fine from Baht 20,000 to Baht 200,000. The court can also order the confiscation or destruction of all infringing circuit designs, integrated circuits and infringing products or take other act


Patent, copyright and trade secrets


Department of Intellectual Property 44/100 Nonthaburi 1 Rd., Bangkrasor, Muang Nonthaburi Thailand 11000 http://www.dip.moc.go.th/ipthailand/index.php, www.ipthailand.org Tel: (66)25474621 to 5 Fax: (66)25474696


Yes


It should be noted that the protection of an integrated circuit is a separate issue from the protection of the copyright and trade secrets (if applicable), present in the software that may be stored in an integrated circuit. Copyright law is too general to accommodate the original ideas of scientific creation of layout-Designs of integrated Circuits. Certain aspects of integrated circuit products may be patentable, for example the structure and method of operation of electronic circuit manifested in an integrated circuit, or the industrial processes used to manufacture integrated circuit products. However, patents do not appropriately accommodate the requirements of intellectual property rights protection for the layout designs of integrated circuits. This is because in the context of layout designs, the concept of originality is of utmost significance, whether it is a “novelty or not”. While the Patent Law requires that the idea should be original as well as novel. Therefore, all aspects above may be eligible for additional protection under the Integrated Circuits Act, separate and apart from the rights available under the Integrated Circuits Act. Protection under the Integrated Circuits Act can be much broader than the protection available under the Integrated Circuits Act, and should generally be considered in addition to protection under the Integrated Circuits Act.

http://www.dip.moc.go.th/ipthailand/index.php

243

Trade Secrets

Basic information on acquisition of Trade secret rights Does your country have trade secret legislation in place [if not, please indicate its status, e.g. Bill under process]

Yes.


Trade Secrets Law can be classified as a part of Intellectual Property Laws, under TRIPS (1994), member nations are required to protect trade secrets. Thailand, therefore, enacted Trade Secrets Act B.E. 2545 (2002) in order to conform with that agreement, promote free trade and prevent unfair trade practices as well as cover liabilities for violation of trade secrets. Trade Secrets Act essentially grants the owner the protection against misappropriation of certain confidential information, i.e., information including formula, program, pattern, compilation, method, device, technique, or process.


No


www.ipthailand.org


Under Trade Secrets Act, three conditions must be satisfied before a civil action for breach of confidential information can succeed:

(1) The trade information must not be publicly known or not yet accessible by persons who are normally connected with the information.

(2) The trade information must be of very valuable commercial assets because of its secrecy. For example, the Coca Cola Company has the secret information for its very well-known product "Coke".

(3) The controller of the trade secrets has taken appropriate measures to maintain the secrecy, such as the performance of contract. The contract can be made between employees and independent contractors.

More over, A trade secret, as protected under the TSA,

consists of the following: 1. Trade information that is not generally known or readily

accessible to groups of persons within the circles that normally deal with information of the said kind.

The TSA defines “trade information” as material that conveys terms, matters, facts or other things, communicated in whatever way and arranged in whatever form, including formulae, forms, collected or assembled works, programs, methods, techniques or processes. Trade secrets can be categorized into two types, as follows: Industrial secrets, which consist of trade information that is related to technical matters, such as a manufacturing process or

Country: Thailand

244

chemical formulae. Commercial secrets, which consist of trade information that is related to sales methods, contract forms, customer lists, advertisement techniques, etc.

2. Trade information that has commercial value due to its secrecy.

3. Trade information that has been subject to reasonable measures taken by its lawful controller to keep it secret.

Furthermore, the protection of trade secrets under the TSA is extended to undisclosed test results or any data made, discovered, or created with considerable effort. This provision would apply in a scenario where the applicant has requested the applicable state agency to keep the data secret in case the applicant is required by law to submit information supporting an application for approval by the state agency for the manufacture, importation, exportation, or sale of medicine or agricultural chemical products utilizing new chemical entities.

Forms required to fill and submit Form TS 01- Apply for a Trade secret

Any special provisions/formalities Trade secrets owner is entitled to notify their trade information with

the Department of Intellectual Property. This notification is not a requirement for the secrets to be legally protected under this Act. The trade secrets are subject to automatic protection once the conditions stated above are met with no formalities. The DIP will issue a certificate of notification for such trade information. The notification is free of charge.

Duration of protection (years) No registration is required to obtain trade secret protection. Trade secrets shall have protection as long as they are deemed secret.

Trade secret Office contact details (Mailing address, phone, website, email, etc.)

Trade secret Office, Department of Intellectual Property 44/100 Sanambin nam Road, Tumbol Bangkasor, Amphur Muang, Nonthaburi 11000, Thailand Tel: 66-2-5474621-25 Fax: 66-2-5474681


Yes, www.ipthailand.org



in local currency


in US $

a)Registration

None

b)Examination

None

c) Maintenance (renewal) None d) Others, if any -



2-5 years

Rights conferred by the Act Major rights conferred to trade secrets

Trade secrets are transferable. Additionally, the trade secrets owner has the right to use, deprive of, disclose, or license someone else to use, deprive of, and disclose such trade secrets.


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The transfer, however, must be made in writing and signed by the transfer or and transferee, excepting by way of inheritance. Under this Act, the contract shall be deemed to cover a period of ten years if no time infringing specified.

Limitations on Trade secret rights (i.e. acts not constituting infringement, e.g. research exemptions)

The following actions are not considered as the infringement of Trade Secrets. (1) Disclosure or use of trade secrets by a person who acquires the trade secrets through the juristic act without knowing or having, reasonable cause to know that the other party to the transaction acquired trade secrets by infringement other's trade secrets. (2) Disclosure or use of trade secrets by state agency, which maintain trade secrets to the following cases:

(a) In case of the necessity to protect health or security of the public;

(b) In case of the necessity to protect the public interests without the commercial purpose. In such case, state agency that maintains trade secrets or an involved person who acquires the trade secrets proceeds with the case to protect such trade secrets from unfair commercial use. (3) Independent discovery (4) Reverse engineering


None



What constitutes infringement of a trade secreted

The infringements of trade secret rights are the act of disclosure, deprivation or usage of trade secrets without the consent of trade secrets owner. In that way, the infringer must also be aware of or has reasonable cause to be aware that such act is contrary to honest trade practices. Acts contrary to honest trade practices include breach of contract, infringement or inducement to infringe confidentiality, bribery, coercion, fraud, theft, receiving of stolen property or espionage through electronics.

Remedies for infringement The Trade Secrets Act provides a wide range of sanction for infringement of the trade secrets, the penalties are as follows:

(1) the imprisonment not exceeding one year or fine not exceeding two hundred thousand baht, or both|

(2 ) the imprisonment from five to ten years or fine from one to two million Baht, or both.


No

Website for public search of trade secrets and for requesting copies of Trade secret Office records

www.ipthailand.org

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Source for printed or electronic journals published by the Trade secret Authority

www.ipthailand.org


No


The Trade Secret Act prescribes the following trial criteria for proceedings before the IP&IT Court: 1. Where the controller of a trade secret files action with the Court requesting a preliminary injunction or permanent injunction, as described above, and it is the judgment of the Court that trade secret infringement exists but under special circumstances which do not justify the injunction as requested, the Court may consider ordering the trade secret infringer to pay fair compensation and allow continued use of the trade secret within a period that the Court believes reasonable. 2. In a case where the Court has issued an injunction prohibiting the resumption of infringement of a trade secret and it appears that such trade secret has been independently disclosed to the general public and is no longer secret, the person subject to such injunction is entitled to file an application to the Court to revoke such injunction. 3. Products made as a result of the infringement of a trade secret, which are still under the ownership of the infringer, shall be vested with the state or the trade secret controller, as ordered by the Court. Alternatively, the Court may order the destruction of such products if the possession of such products is deemed to be illicit. 4. Furthermore, the Trade Secret Act provides the benefit of presumption for a trade secret. That is, if the controller of a trade secret, which by its nature is a process of manufacturing a product, has taken civil action against an infringer, and the trade secret controller has proven that the infringer’s product is of the same nature as the product manufactured by the process belonging to the controller, it shall be preliminarily assumed that the infringer has used the process belonging to the trade secret controller, unless proven otherwise by the infringer.

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Annex-I: IP Systems in USA

Patent Basic information on acquisition of Patent rights Does your country have patent legislation in place [if not, please indicate its status, e.g. Bill under process] Yes Title of legislation, year and major amendments in your country 1790 Patent Act/ United States Code Title 35 Major amendments / case law:

1954 Provisions relating to plant patents were amended to make it clear that cultivated sports, mutants, hybrids and newly found seedlings were patentable.

1995 Protection of biotechnology processes from finding of obviousness if it is for the production of new and non obvious product.

1999-2001 Provision for early publication of patent applications where equivalent applications are published abroad, the protection of inventors using the services of invention promotion services and first inventor (prior user) defense for prior users of business methods is passed; changes relating to patent term extension (adjustment) and to address changes in examination and provisional application practice; fee reductions for patent filing fees, fees for reissue applications and certain PCT national phase entries.

State whether your country is a member to the Patent Cooperation Treaty (PCT) Yes State whether your country is a member of World Trade Orgn (WTO) Yes Any essential requirement for foreigner/foreign organization to get protection in your country, e.g. presence of local agents/representatives The agent/representatives should be an authorized USPTO practitioner Website to access legislation (indicate Internet link) http://www.uspto.gov/web/offices/pac/mpep/consolidated_laws.pdf Registration formalities Protection criteria Novelty, non-obviousness, and usefulness “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof” Inventions not patentable

Inventions useful solely in the utilization of special nuclear material or atomic energy in an atomic weapon

Laws of nature, physical phenomena, and abstract ideas Mere idea or suggestion

Country: United States

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Forms required to fill and submit http://www.uspto.gov/web/forms/index.html#patent http://www.uspto.gov/ebc/portal/forms.htm Any special provisions/formalities -- Duration of protection (years) 20 years from earliest filing date Patent Office contact details (Mailing address, phone, website, email, etc.) United States Patent and Trademark Office Commissioner for Patents P.O. Box 1450, Alexandria, VA 22313-1450 http://www.uspto.gov/ 1-800-786-9199 State whether online submission is permitted, if so, indicate website Yes http://www.uspto.gov/ebc/index.html Cost (approx.) Applicable to natural persons

(i.e. individuals) Other than natural persons (i.e. organizations)

in local currency


in US $

a)Registration

$200-$300 $200-$300 $200-$300 $200-$300

b)Examination

$130-600 $130-600 $130-600 $130-600

c) Maintenance (renewal) $900-$3,800 $900-$3,800 $900-$3,800 $900-$3,800

d) Others, if any http://www.uspto.gov/web/offices/pac/mpep/consolidated_laws.pdf -- Chapter 4

Deposit requirements, if any Biological material needs to be deposited if access to such material is necessary for the satisfaction of the statutory requirements for patentability. Original deposit thereof may be made at any time before filing the application for patent or, during pendency of the application for patent. Length of processing and release of Certificate (approx.), e.g. length of publication, examination, etc. 1-3 years Rights conferred by the Act Major rights conferred to patentees Right to exclude others from making, using, offering for sale, or selling” the invention in the United States or “importing” the invention into the United States Limitations on Patent rights (i.e. acts not constituting infringement, e.g. research exemptions) Research for purely “philosophical” inquiry not an infringement

http://www.uspto.gov/web/forms/index.html#patent

http://www.uspto.gov/ebc/portal/forms.htm

http://www.uspto.gov/

http://www.uspto.gov/ebc/index.html

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Other information Date of priority and requirements An applicant in a non-provisional application may claim the benefit of the filing date of one or more prior provisional or foreign applications under the conditions specified 35 U.S.C. 119(a) through (d) and (f), 172, and 365(a) and (b). Renewal process / procedure Submission of application (within 60 days) for extension of the term of a patent by the owner of the record of the patent or its agent. The application to contain: 1) identity of the approved product and the Federal statute under which regulatory review occurred; 2) identity of patent and claims for which an extension is being sought; 3) information to enable Director to determine eligibility of a patent for extension and the rights that will be derived from the extension and information to enable the Director and the Secretary of Health and Human Services or the Secretary of Agriculture to determine the period of the extension; 4) a brief description of the activities undertaken by the applicant during the applicable regulatory review period with respect to the approved product and the significant dates applicable to such activities; and 5) such patent or other information as the Director may require. Director of USPTO to notify Secretary (Agriculture or Health and Human Services) Publication of the notice of determination on the Federal Register by the USPTO Opposition formalities The protest (in duplicate) needs to be filed prior to the date the application was published, or a notice of allowance under was mailed, whichever occurs first and to contain: 1) listing of the patents, publication, or other information relied upon; 2) A concise explanation of the relevance of each item; 3) copy of each listed patent, publication, or other item of information in written form, or at least the pertinent portions thereof; 4) an English language translation of all the necessary and pertinent parts of any non-English language patent, publication, or other item of information relied upon; 5) if it is a second or subsequent protest by the same party in interest, an explanation as to why the issue(s) raised in the second or subsequent protest are significantly different than those raised earlier and why the significantly different issue(s) were not presented earlier, and a processing fee must be submitted; and 6) self-address postcard to receive an acknowledgement by the Office that the protest has been received.

Protests that comply these requirements may not be entered, and if not entered, will be returned to the protestor, or discarded, at the option of the Office.

The applicant will only reply to the protest when requested by USPTO.

What constitutes infringement of a patented invention Unauthorized making, using, offering for sale, or selling any patented invention within the United States or U.S. Territories, or importing into the United States of any patented invention during the term of the patent Remedies for infringement Injunction, Damages (with interests and costs), awarding of reasonable attorney’s fees to the prevailing party; time limitation on damages; Limitation on damages and other remedies; and marking and notice.

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Any relationship with other legislations in your country 1930 Plant Patent Act; 1951 Invention Secrecy Act; 1980 Bayh-Dole Act; 1999 Intellectual Property and Communications Omnibus Reform Act; 1999 American Inventors Protection Act; 2002 Intellectual Property and High Technology Technical Amendments Act Website for public search of patents and for requesting copies of Patent Office records http://patft.uspto.gov/ Source for printed or electronic journals published by the Patent Authority Scientific and Technical Information Center, USPTO http://www.uspto.gov/ebc/index.html Provision for compulsory/voluntary licensing [Y or N] Yes Any other additional information

US system follows the first-to-invent patent legal framework. By contrast, all other national patent laws are first-to-file systems.

USPTO issue plant patents. Utility patents may be provisional or non-provisional. A provisional allows filing without any formal

patent claims, oath or declaration, or any information disclosure (prior art) statement.

http://patft.uspto.gov/

http://www.uspto.gov/ebc/index.html

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Basic information on acquisition of PVP rights Does your country have PVP legislation in place [if not, please indicate its status, e.g. Bill under process] Yes Title of legislation, year and major amendments in your country Pub Law 91-577, Dec. 24, 1970, 84 Stat. 1542-1559 Type of protection (include special features, if any) e.g. Patent or PVP registration or both* Both Patent and PCP protection available State whether your country is member of the UPOV Convention Yes Any essential requirement for foreigner/foreign organization to get protection in your country, e.g. presence of local agents/representatives (a) Protection under the Act shall be afforded only as follows:

(1) Nationals and residents of the United States shall be eligible to receive all of the protection under the Act.

(2) Nationals and residents of Member States of the International Union for the Protection of New Varieties of Plants (including states which are members of an intergovernmental organization which is a UPOV member) shall be eligible to receive the same protection under the Act as is provided to nationals of the United States.

(b) Persons who are not entitled to protection under paragraph (a)(1) or (2) of this section, and who are nationals of a foreign state which is not a member of the International Union for the Protection of New Varieties of Plants, shall be entitled to only so much of the protection provided under the Act, as is afforded by such foreign state to nationals of the United States, for the same genus and species under the laws of such foreign state in effect at the time that the application for protection under the Act is filed, except where further protection under the Act must be provided in order to avoid the violation of a treaty to which the United States is a party. Website to access legislation (indicate Internet link) http://www.ams.usda.gov/AMSv1.0/getfile?dDocName=STELDEV3002796 Registration formalities Types of varieties that can be protected e.g. new, extant variety, farmer’s variety, Essentially Derived Varieties (EDV) IN GENERAL.-The breeder of any sexually reproduced or tuber propagated plant variety (other than fungi

or bacteria) who has so reproduced the variety, or the successor in interest of the breeder, shall be entitled to plant variety protection for the variety, subject to the conditions and requirements of this Act, if the variety is-


http://www.ams.usda.gov/AMSv1.0/getfile?dDocName=STELDEV3002796

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(1) new, in the sense that, on the date of filing of the application for plant variety protection, propagating or harvested material of the variety has not been sold or otherwise disposed of to other persons, by or with the consent of the breeder, or the successor in interest of the breeder, for purposes of exploitation of the variety-

(A) in the United States, more than 1 year prior to the date of filing; or (B) in any area outside of the United States-

(i) more than 4 years prior to the date of filing, except that in the case of a tuber propagated plant variety the Secretary may waive the 4-year limitation for a period ending 1 year after the date of enactment of the Federal Agriculture Improvement and Reform Act of 1996; or

(ii) in the case of a tree or vine, more than 6 years prior to the date of filing;

(2) distinct, in the sense that the variety is clearly distinguishable from any other variety the existence of which is publicly known or a matter of common knowledge at the time of the filing of the application; (3) uniform, in the sense that any variations are describable, predictable, and commercially acceptable; and (4) stable, in the sense that the variety, when reproduced, will remain unchanged with regard to the essential and distinctive characteristics of the variety with a reasonable degree of reliability commensurate with that of varieties of the same category in which the same breeding method is employed. Whether protection is through notification, if yes, please state the crops notified for protection (Crops protectable under PVP: http://www.ams.usda.gov/AMSv1.0/getfile?dDocName=STELDEV3003275 Protection criteria (DUS etc.) § 97.6 Application for certificate. (a) An application for a plant variety protection certificate shall be signed by, or on behalf, of the applicant. (b) The application shall state the full name, including the full first name and the middle initial or name, if

any, and the capacity of the person executing it. (c) The fees for filing an application, and search or examination, shall be submitted with the application in

accordance with sections 97.175 through 97.178. (d) The applicant shall submit with the application: (1) A declaration that at least 3,000 seeds of the viable basic seed required to reproduce the variety will be deposited in a public depository approved by the Commissioner and will be maintained for the duration of the certificate; or (2) With the application for a tuber propagated variety, a declaration that a viable cell culture will be deposited in a public depository approved by the Commissioner and will be maintained for the duration of the certificate; or (3) With the application for a hybrid from self-incompatible parents, a declaration that a plot of vegetative material for each parent will be established in a public depository approved by the Commissioner and will be maintained for the duration of the certificate.

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What cannot be protected § 97.1 General. Certificates of protection are issued by the Plant Variety Protection Office for new, distinct, uniform, and stable varieties of sexually reproduced or tuber propagated plants. Each certificate of plant variety protection certifies that the breeder has the right, during the term of the protection, to prevent others from selling the variety, offering it for sale, reproducing it, importing or exporting it, conditioning it, stocking it, or using it in producing a hybrid or different variety from it, as provided by the Act. (Presumably, anything not stated above as protected is not protected.) Forms required to fill and submit Forms and information can be found at: http://www.ams.usda.gov/AMSv1.0/ams.fetchTemplateData.do?template= TemplateM&navID=HowtoApply&rightNav1=HowtoApply&topNav=&leftNav= &page=PVPOApplicationRequirements&resultType=&acct=plntvarprtctn Any special provisions/formalities (See protection criteria above.) Duration of protection (years) (a) Term. -

(1) IN GENERAL.- Except as provided in paragraph (2), the term of plant variety protection shall expire 20 years from the date of issue of the certificate in the United States, except that –

(A) in the case of a tuber propagated plant variety subject to a waiver granted under the

section 42(a)(1)(B)(i), the term of the plant variety protection shall expire 20 years after the date of the original grant of the plant breeder's rights to the variety outside the United States; and

(B) in the case of a tree or vine, the term of the plant variety protection shall expire 25

years from the date of issue of the certificate. (2) EXCEPTIONS. - If the certificate is not issued within three years from the effective filing date,

the Secretary may shorten the term by the amount of delay in the prosecution of the application attributed by the Secretary to the applicant.

(b) The term of plant variety protection shall also expire if the owner fails to comply with regulations, in force at the time of certificating, relating to replenishing seed in a public repository, or requiring the submission of a different name for the variety, except that this expiration shall not occur unless notice is mailed to the last owner recorded as provided in section 101(d) and the last owner fails, within the time allowed thereafter, not less than three months, to comply with said regulations, paying an additional fee to be prescribed by the Secretary. (7 U.S.C. 2483.) Registry Office contact details (Mailing address, phone, website, email, etc.) http://www.ams.usda.gov/AMSv1.0/ams.fetchTemplateData.do?template= TemplateC&navID=PlantVarietyProtectionOffice&rightNav1= PlantVarietyProtectionOffice&topNav=&leftNav= ScienceandLaboratories&page=PlantVarietyProtectionOffice&resultType=&acct=plntvarprtctn Dr. Paul M. Zankowski, Commissioner 10301 Baltimore Avenue, Room 401 National Agricultural Library Building, Beltsville, MD 20705 Tel: (301) 504-5518 Fax: (301) 504-5291/ e-mail: [email protected] State whether online submission is permitted, if so, indicate website N/A


254

Cost (approx.) Description of Fees Length of processing and release of Certificate (approx.), e.g. length of publication, examination, etc. Completely variable—1 to 3 years or longer. Rights conferred by the Act Major plant breeders’ rights Certificates of protection are issued by the Plant Variety Protection Office for new, distinct, uniform, and stable varieties of sexually reproduced or tuber propagated plants. Each certificate of plant variety protection certifies that the breeder has the right, during the term of the protection, to prevent others from selling the variety, offering it for sale, reproducing it, importing or exporting it, conditioning it, stocking it, or using it in producing a hybrid or different variety from it, as provided by the Act. Farmers’ rights Under provisions of the PVP law and regulations growers and home gardeners can grow, and save seed for their own future planting, any legally purchased protected variety they wish. However some protected varieties that are sold may have other limitations due to patents or contracts and may not be saved for future planting. Exemptions to farmers, if any (See farmers’ rights above.) Research exemptions There is a research exemption to allow the use for breeding to develop a new variety.

Description Filing the application and notifying the public of filing

$ 518.00

Search or examination 3,864.00Submission of new application data, after notice of allowance, prior to issuance of certificate

432.00

Allowance and issuance of certificate and notifying public of issuance

768.00

Revive an abandoned application 518.00 Reproduction of records, drawings, certificates, exhibits, or printed material (copy per page of material)

1.80

Authentication (each page) 1.80Correcting or re-issuance of a certificate 518.00Recording assignments* 41.00Copies of 8" x 10" photographs in color. 41.00Additional fee for reconsideration 518.00Additional fee for late payment 41.00Fee for handling replenishment seed sample 38.00Filing a petition for protest proceeding 4,118.00Appeal to Secretary ** 4,942.00Granting of extensions for responding to a request 89.00

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Other information Date of priority and requirements Sec. 55. Benefit of Earlier Filing Date (a) (1) An application for a certificate of plant variety protection filed in this country based on the same

variety, and on rights derived from the same breeder, on which there has previously been filed an application for plant variety protection in a foreign country which affords similar privileges in the case of applications filed in the United States by nationals of the United States, shall have the same effect as the same application would have if filed in the United States on the date on which the application for plant variety protection for the same variety was first filed in such foreign country, if the application in this country is filed within twelve months from the earliest date on which such foreign application was filed, not including the date on which the application is filed in the foreign country.

(2) No application shall be entitled to a right of priority under this section, unless the applicant

designates the foreign application in the application filed in the United States or by amendment thereto and, if required by the Secretary, furnishes such copy, translation or both, as the Secretary may specify.

(3) (A) An applicant entitled to a right of priority under this subsection shall be allowed to furnish

any necessary information, document, or material required for the purpose of the examination of the application during-

(i) the 2-year period beginning on the date of the expiration of the period of priority; or (ii) if the first application is rejected or withdrawn, an appropriate period after the

rejection or withdrawal, to be determined by the Secretary.

(B) An event occurring within the period of priority (such as the filing of another application or use of the variety that is the subject of the first application) shall not constitute a ground for rejecting the application or give rise to any third party right. 12

b) An application for a certificate of plant variety protection for the same variety as was the subject of an application previously filed in the United States by or on behalf of the same person, or by the predecessor in title of the person, shall have the same effect as to such variety as though filed on the date of the prior application if filed before the issuance of the certificate or other termination of proceedings on the first application or on an application similarly entitled to the benefit of the filing date of the first application and if it contains or is amended to contain a specific reference to the earlier filed application. (c) A later application shall not by itself establish that a characteristic newly described was in the variety at the time of the earlier application. (7 U.S.C. 2425.) Renewal process / procedure N/A Opposition formalities PROTEST PROCEEDINGS § 97.200 Protests to the grant of a certificate. Opposition on the part of any person to the granting of a certificate shall be permitted while an application is pending and for a period not to exceed 5 years following the issuance of a certificate.

256

§ 97.201 Protest proceedings. (a) Opposition shall be made by submitting in writing a petition for protest proceedings, which petition shall be supported by affidavits and shall show the reason or reasons for opposing the application or certificate. The petition and accompanying papers shall be filed in duplicate. If it appears to an examiner that a variety involved in a pending application or covered by a certificate may not be or may not have been entitled to protection under the Act, a protest proceeding may be permitted by the Commissioner. (b) One copy of the petition and accompanying papers shall be served by the Office upon the applicant or

owner, or his or her attorney or agent of record. (c) An answer, by the applicant or owner of the certificate, or his or her assignee, in response to the

petition, may be filed with the Commissioner within 60 days after service of the petition, upon such person. If no answer is filed within said period, the Commissioner shall decide the matter on the basis of the allegations set forth in the petition.

(d) If the petition and answer raise any issue of fact needing proof, the Commissioner shall afford each of

the parties a period of 60 days in which to file sworn statements or affidavits in support of their respective positions.

(e) As soon as practicable after the petition or the petition and answer are filed, or after the expiration of any period for filing sworn statements or affidavits, the Commissioner shall issue a decision as to whether the protests are upheld or denied. The Commissioner may, following the protest proceeding, cancel any certificate issued and may grant another certificate for the same variety to a person who proves to the satisfaction of the Commissioner, that he or she is the breeder or discoverer. The decision shall be served upon the parties in the manner provided in section 97.403. What constitutes infringement of a protected variety in your country (e.g. Producing, selling, importing and exporting of a registered variety without the permission of its breeder, etc.) CHAPTER 11.-INFRINGEMENT OF PLANT VARIETY PROTECTION Sec. 111. Infringement of Plant Variety Protection. (a) Except as otherwise provided in this title, it shall be an infringement of the rights of the owner of a

protected variety to perform without authority, any of the following acts in the United States, or in commerce which can be regulated by Congress or affecting such commerce, prior to expiration of the right to plant variety protection but after either the issue of the certificate or the distribution of a protected plant variety with the notice under section 127:

(1) sell or market the protected variety, or offer it or expose it for sale, deliver it, ship it, consign it,

exchange it, or solicit an offer to buy it, or any other transfer of title or possession of it; (2) import the variety into, or export it from, the United States; (3) sexually multiply, or propagate by a tuber or a part of a tuber, the variety as a step in

marketing (for growing purposes) the variety; (4) use the variety in producing (as distinguished from developing) a hybrid or different variety

therefrom; (5)41 use seed which had been marked "Unauthorized Propagation Prohibited'' or "Unauthorized

Seed Multiplication Prohibited'' or progeny thereof to propagate the variety; (6) dispense the variety to another, in a form which can be propagated, without notice as to being

a protected variety under which it was received; (7) condition the variety for the purpose of propagation, except to the extent that the conditioning

is related to the activities permitted under section 113; (8) stock the variety for any of the purposes referred to in paragraphs (1) through (7); (9) perform any of the foregoing acts even in instances in which the variety is multiplied other

than sexually, except in pursuance of a valid United States plant patent; or (10) instigate or actively induce performance of any of the foregoing acts.

(b) (1) Subject to paragraph (2), the owner of a protected variety may authorize the use of the variety

under this section subject to conditions and limitations specified by the owner.

257

(2) In the case of a contract between a seed producer and the owner of a protected variety of lawn, turf, or forage grass seed, or alfalfa or clover seed for the production of seed of the protected variety, the producer shall be deemed to be authorized by the owner to sell such seed and to use the variety if−

(A) the producer has fulfilled the terms of the contract; (B) the owner refuses to take delivery of the seed or refuses to pay any amounts due

under the contract within 30 days of the payment date specified in the contract; and (C) after the expiration of the period specified in subparagraph (B), the producer notifies

the owner of the producer's intent to sell the seed and unless the owner fails to pay the amounts due under the contract and take delivery of the seed within 30 days of such notification. For the purposes of this paragraph, the term "owner" shall include any licensee of the owner. 19

(3) Paragraph (2) shall apply to contracts entered into with respect to plant varieties protected under this Act (7 U.S.C. 2321 et seq.) as in effect on the day before the effective date of this provision as well as plant varieties protected under this Act as amended by the Plant Variety Protection Act Amendments of 1994. (4) Nothing in this subsection shall affect any other rights or remedies of producers or owners that may exist under other Federal or State laws. (c) This section shall apply equally to-

(1) any variety that is essentially derived from a protected variety, unless the protected variety is an essentially derived variety;

(2) any variety that is not clearly distinguishable from a protected variety; (3) any variety whose production requires the repeated use of a protected variety; and (4) harvested material (including entire plants and parts of plants) obtained through the

unauthorized use of propagating material of a protected variety, unless the owner of the variety has had a reasonable opportunity to exercise the rights provided under this Act with respect to the propagating material.

(d) It shall not be an infringement of the rights of the owner of a variety to perform any act concerning

propagating material of any kind, or harvested material, including entire plants and parts of plants, of a protected variety that is sold or otherwise marketed with the consent of the owner in the United States, unless the act involves further propagation of the variety or involves an export of material of the variety, that enables the propagation of the variety, into a country that does not protect varieties of the plant genus or species to which the variety belongs, unless the exported material is for final consumption purposes.

(e) It shall not be an infringement of the rights of the owner of a variety to perform any act done privately and for noncommercial purposes.

(f) As used in this section, the term "perform without authority" includes performance without authority by any State, any instrumentality of a State, and any officer or employee of a State or instrumentality of a State acting in the official capacity of the officer or employee. Any State, and any such instrumentality, officer, or employee, shall be subject to the provisions of this Act in the same manner and to the same extent as any nongovernmental entity. (7 U.S.C. 2541.) Remedies for infringement Sec. 121. Remedy for Infringement of Plant Variety Protection. An owner shall have remedy by civil action for infringement of plant variety protection under section 111. If a variety is sold under the name of a variety shown in a certificate, there is a prima facie presumption that it is the same variety. (7 U.S.C. 2561.) Any relationship with other legislation in your country CHAPTER 14.-TEMPORARY PROVISION AND RELATED ENACTMENTS; EXEMPTED PLANTS; MISCELLANEOUS

258

Sec. 141. Effective Date. This Act shall take effect upon enactment. Applications may be filed with the Secretary and held by him until the Office of Plant Variety Protection is organized and in operation. (7 U.S.C. 2321.) Sec. 142. Amendment of Federal Seed Act.49 (7 U.S.C. 1551.) Sec. 143. Amendment of Judicial Code.50 (28 U.S.C. 1545.) Sec. 144. Repealed.51 (7 U.S.C. 2583.) Sec. 145. Short Title. This Act may be cited as the "Plant Variety Protection Act''. (7 U.S.C. 2321 note.) 49

This section amends the Federal Seed Act (53 Stat. 1275) by adding at the end thereof a new Title V, Section 501, dealing with the sale of uncertified seed of protected variety. Following is the language of Title V, Section 501:

"Title V −SALE OF UNCERTIFIED SEED OF PROTECTED VARIETY Sec. 501. It shall be unlawful in the United States or in interstate or foreign commerce to sell or offer for sale or advertise, by variety name, seed not certified by an official seed certifying agency, when it is a variety for which a certificate of plant variety protection under the Plant Variety Protection Act specifies sale only as a class of certified seed: Provided, That seed from a certified lot may be labeled as to variety name when used in a mixture by, or with the approval of, the owners of the variety. " (7 U.S.C. 1611.)

50 This section amended Title 28 of the United States Code, entitled Judicial Code and Judiciary, by adding Section 1545, which gave nonexclusive jurisdiction of appeals to the Court of Customs and Patent Appeals. Section 1545 was repealed by Pub. L. 97-164, 96 Stat. 41, April 2, 1982. Pub. L. 97-164, 96 Stat. 37-38, April 2, 1982, amended title 28 of the United States Code by adding a new section 1295, which reads: "Sec. 1295. Jurisdiction of the United States Court of Appeals for the Federal Circuit

"(a) The United States Court of Appeals for the Federal Circuit shall have exclusive jurisdiction-- 51

Pub. L. 96-574, 94 Stat. 3352, Dec. 22, 1980, repealed Section 144 which exempted okra, celery, peppers, tomatoes, carrots, and cucumbers from provisions of the Act. Brief note on benefit sharing mechanism to farmers / communities (state amount / percentage / process of payment) Sec. 131. Intent. It is the intent of Congress to provide the indicated protection for new varieties by exercise of any constitutional power needed for that end, so as to afford adequate encouragement for research, and for marketing when appropriate, to yield for the public the benefits of new varieties. Website for public search of PVP registrations and for requesting copies of PVP Office records http://www.ams.usda.gov/AMSv1.0/ams.fetchTemplateData.do?template= TemplateC&navID=ViewCertificatesandAppStatus&rightNav1= ViewCertificatesandAppStatus&topNav=&leftNav=&page= PVPOPublicAccessDatabase&resultType=&acct=plntvarprtctn Source for printed or electronic journals published by the PVP Authority http://www.ams.usda.gov/AMSv1.0/ams.fetchTemplateData.do?template= TemplateD&navID=PVPONewsReleases&rightNav1=PVPONewsReleases&topNav= &leftNav=&page=PVPOLatestNewsReleases&resultType=&acct=plntvarprtctn Provision for compulsory/voluntary licensing [Y or N] N/A Any other additional information --

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Copyright

Basic information on acquisition of Copyright protection Does your country have Copyright legislation in place [if not, please indicate its status, e.g. Bill under process] Yes Title of legislation, year and major amendments in your country Copyright Act of 1976: Title 17 United States Code State whether your country is a member of Berne Convention for the International Registration of Copyrights Yes Any essential requirement for foreigner/foreign organization to get protection in your country, e.g. presence of local agents/representatives No Website to access legislation (indicate Internet link) http://www.copyright.gov/title17/circ92.pdf Registration formalities Protection criteria On the date of first publication, one or more of the authors is a national or domiciliary of the United

States, or is a national, domiciliary, or sovereign authority of a treaty party,* or is a stateless person wherever that person may be domiciled; or

The work is first published in the United States or in a foreign nation that, on the date of first publication, is a treaty party. For purposes of this condition, a work that is published in the United States or a treaty party within 30 days after publication in a foreign nation that is not a treaty party shall be considered to be first published in the US or such treaty party, as the case may be; or

The work is a sound recording that was first fixed in a treaty party; The work is a pictorial, graphic, or sculptural work that is incorporated in a building or other structure,

or an architectural work that is embodied in a building and the building or structure is located in the United States or a treaty party; or

The work is first published by the United Nations or any of its specialized agencies, or by the Organization of American States; or

The work is a foreign work that was in the public domain in the United States prior to 1996 and its copyright was restored under the Uruguay Round Agreements Act (URAA); or

The work comes within the scope of a Presidential proclamation. Types of works entitled for Copyright protection (e.g. books, periodicals, artistic creations, etc.) Literary works; musical works, including any accompanying words; dramatic works, including any

accompanying music; pantomimes and choreographic works; pictorial, graphic, and sculptural works; motion pictures and other audiovisual works; sound recordings; and architectural works.

Types of works not entitled for Copyright protection Works that have not been fixed in a tangible form of expression (e.g. choreographic works that have

not been notated or recorded, or improvisational speeches or performances that have not been written or recorded);


260

• Titles, names, short phrases, and slogans; familiar symbols or designs; mere variations of typographic ornamentation, lettering, or coloring; mere listings of ingredients or contents;

• Ideas, procedures, methods, systems, processes, concepts, principles, discoveries, or devices, as distinguished from a description, explanation, or illustration;

Works consisting entirely of information that is common property and containing no original authorship (e.g. standard calendars, height and weight charts, tape measures and rulers, and lists or tables taken from public documents or other common sources)

Forms required to fill and submit http://www.copyright.gov/forms/formco2d.pdf http://www.copyright.gov/forms/index.html#group Any special provisions/formalities See website instructions. http://www.copyright.gov/ Duration of protection (years) Work created on or after January 1, 1978 with automatic protection from the moment of its creation -

author’s life plus an additional 70 years after the author’s death. For “a joint work prepared by two or more authors who did not work for hire,” - 70 years after the last

surviving author’s death. For works made for hire, and for anonymous and pseudonymous works (unless the author’s identity is

revealed in Copyright Office records) - 95 years from publication or 120 years from creation, whichever is shorter.

Registry Office contact details (Mailing address, phone, website, email, etc.) U.S. Copyright Office 101 Independence Ave. S.E. Washington, D.C. 20559-6000, (202) 707-3000 http://www.copyright.gov/ State whether online submission is permitted, if so, indicate website Yes. https://eco.copyright.gov/eService_enu/start.swe?SWECmd=GotoView&_sn=6TMoyR7JWBkFSl8idE7L8ebheP87Ugy-G3KFQHmqzbQ_&SWEView=Home+Page+View+%28eService%29&SWEHo=eco.copyright.gov&SWETS=1229979123b Cost (approx.) Applicable to natural

persons (i.e. individuals) Other than natural persons (i.e. organizations)

in local currency

in US $ in local currency in US $

Registration (online) $ 35 $ 35 $ 35 $ 35 Maintenance (renewal) $75 $75 $75 $75 Others, if any Refer http://www.copyright.gov/docs/fees.html Deposit requirements, if any Unpublished work: one complete copy or phonorecord; Published work: two complete copies or phonorecords of the best edition; First published outside the United States: one complete copy or phonorecord as so published; Contribution to a collective work, one complete copy or phonorecord of the best edition of the

collective work. Length of processing and release of Certificate (approx.) Five months for online submissions. Over a year for “paper claims” submitted by mail.

http://www.copyright.gov/help/faq/faq-register.html#length

http://www.copyright.gov/forms/formco2d.pdf

http://www.copyright.gov/forms/index.html#group

http://www.copyright.gov/

https://eco.copyright.gov/eService_enu/start.swe?SWECmd=GotoView&_sn=6TMoyR7JWBkFSl8idE7L8ebheP87Ugy-G3KFQHmqzbQ_&SWEView=Home+Page+View+%28eService%29&SWEHo=eco.copyright.gov&SWETS=1229979123b




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To reproduce the work in copies or phonorecords; To prepare derivative works based upon the work; To distribute copies or phonorecords of the work to the public by sale or other transfer of ownership,

or by rental, lease, or lending; To perform the work publicly, in the case of literary, musical, dramatic, and choreographic works,

pantomimes, and motion pictures and other audiovisual works; To display the work publicly, in the case of literary, musical, dramatic, and choreographic works,

pantomimes, and pictorial, graphic, or sculptural works, including the individual images of a motion picture or other audiovisual work; and

In the case of sound recordings,* to perform the work publicly by means of a digital audio transmission.

Exemptions Fair use (production in copies or phonorecords for purposes such as criticism, comment, news reporting, teaching, scholarship, or research); reproduction by libraries and archive with no commercial purpose; effect of transfer of particular copy or phonorecord; exemption of certain performances and displays; secondary transmissions; ephemeral recordings; computer programs for archival purposes and as essential step to use the computer program; Secondary transmissions of superstations and network stations for private home viewing; reproduction for blind or other people with disabilities; secondary transmissions by satellite carriers within local market.


A copyright registration is effective on the date the Copyright Office receives all the required elements in acceptable form.

Opposition formalities -- What constitutes infringement of a copyrighted material

Anyone who violates any of the exclusive rights of the copyright owner or of the author or who imports copies or phonorecords into the United States


Injunctions; Impounding and disposition of infringing articles; Damages and profits; recovery of full costs and reasonable attorney’ fees; criminal and civil actions;

Renewal process / procedure To register a renewal, send: a. A properly completed application Form RE and, if necessary, Form RE Addendum, and b. A nonrefundable filing fee* for each application and each Addendum. Each Addendum form must be

accompanied by a deposit representing the work being renewed.

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1998 Digital Millennium Copyright Act; 2004 Copyright Royalty and Distribution Reform Act; 2004 Satellite Home Viewer Extension and Reauthorization Act; 2005 Family Entertainment and Copyright Act (including the 2005 Artists’ Rights and Theft Prevention Act, 2005 Family Movie Act, and the Preservation of Orphan Works Act).


http://www.copyright.gov/records/ and Copyright Public Information Office

Searching and Request for copies of Copyright Office records [Y or N] Y Any other additional information

Although a copyright registration is not required, the Copyright Act establishes a mandatory deposit

requirement for works published in the United States. A single deposit can however be made to satisfy both the deposit requirements for the Library and the registration requirements.

Pre-registration is encouraged. The use of a copyright notice is no longer required under U. S. law.

http://www.copyright.gov/records/

263

Trademark Basic information on acquisition of TM rights Does your country have Trademark legislation in place [if not, please indicate its status, e.g. Bill under process] Yes Title of legislation, year and major amendments in your country Trademark (Lanham) Act of 1946 (15 U.S.C. 1051) Major amendments: 1995 Federal Trademark Dilution Act which protects famous marks from uses that dilute their distinctiveness, even in the absence of any likelihood of confusion or competition State whether your country is a member of Madrid System for the International Registration of Marks Yes State whether your TM legislation allows registration of goods or services or both as Trademarks Yes Any essential requirement for foreigner/foreign organization to get protection in your country, e.g. presence of local agents/representatives Need to appoint domestic representative" as part of the application process Website to access legislation (indicate Internet link) http://www.uspto.gov/web/offices/tac/tmlaw2.pdf Registration formalities Protection criteria Mark has become distinctive, substantially exclusive, and continuously being use What can be registered Trademarks that can distinguish the goods or services of a party, will not confuse consumers about the relationship between one party and another, and will not otherwise deceive consumers with respect to the qualities of the product. What cannot be registered

Consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or

National symbols, or bring them into contempt, or disrepute; or a geographical indication which, when used on or in connection with wines or spirits, identifies a place other than the origin of the goods and is first used on or in connection with wines or spirits by the applicant on or after one year after the date on which the WTO Agreement enters into force with respect to the United States.

Consists of or comprises the flag or coat of arms or other insignia of the United States, or of any State or municipality, or of any foreign nation, or any simulation thereof.


264

Consists of or comprises a name, portrait, or signature identifying a particular living individual except by his written consent, or the name, signature, or portrait of a deceased President of the United States during the life of his widow, if any, except by the written consent of the widow.

Consists of or comprises a mark which so resembles a mark registered in the Patent and Trademark Office, or a mark or trade name previously used in the United States by another and not abandoned, as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive:

Consists of a mark which, (1) when used on or in connection with the goods of the applicant is merely descriptive or deceptively misdescriptive of them, (2) when used on or in connection with the goods of the applicant is primarily geographically descriptive of them, except as indications of regional origin may be registrable, (3) when used on or in connection with the goods of the applicant is primarily geographically deceptively misdescriptive of them, (4) is primarily merely a surname, or (5) comprises any matter that, as a whole, is functional.

A mark which would be likely to cause dilution by blurring or dilution by tarnishment Forms required to fill and submit http://www.uspto.gov/web/forms/index.html#TM Any special provisions/formalities -- Duration of protection (years) 10 years Registry Office contact details (Mailing address, phone, website, email, etc.) Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451 1-800-786-9199 [email protected]. or [email protected]. State whether online submission is permitted, if so, indicate website http://www.uspto.gov/teas/index.html Cost (approx.) Applicable to natural persons (i.e.

individuals) Other than natural persons (i.e. organizations)


in US $

a)Registration (on paper)

375.00 375.00 375.00 375.00

b) Maintenance (renewal) $400.00 $400.00 $400.00 $400.00

d) Others, if any http://www.uspto.gov/web/offices/ac/qs/ope/fee2009january01.htm#tm

Deposit requirements, if any -- Length of processing and release of Certificate (approx.), e.g. length of publication, examination, etc. > 1 year

http://www.uspto.gov/web/forms/index.html#TM



http://www.uspto.gov/web/offices/ac/qs/ope/fee2009january01.htm#tm

http://www.uspto.gov/web/offices/ac/qs/ope/fee2009january01.htm#tm

265


Exclusive use of the mark in relation to the products or services for which it is registered Other information Date of priority and requirements

Claim of priority, based upon an earlier-filed foreign application, and filed within six months of the filing date of the foreign application.

Renewal process / procedure Renewal must be filed within one year before the expiration date of the registration, or within the six-month grace period after the expiration date of the registration. A complete renewal application must include: 1) a request for renewal of the registration, signed by the registrant or the registrant’s representative; 2) The fee required for each class; 3) the additional fee required by for each class if the renewal application is filed during the six-month grace period set forth in the Act; 4) if the renewal application covers less than all the goods or services in the registration, a list of the particular goods or services to be renewed; 5) if at least one fee is submitted for a multi-class registration, but the class(es) to which the fee(s) should be applied are not specified, the Office will issue a notice requiring either the submission of additional fee(s) or an indication of the class(es) to which the original fee(s) should be applied. Opposition formalities

Any party who believes it may be damaged by registration of the mark has thirty (30) days from the publication date to file either an opposition to registration or a request to extend the time to oppose. Proceeding for opposition is held before the Trademark Trial and Appeal Board, a USPTO administrative tribunal.


1999 Anticybersquatting Consumer Protection Act

Model Trademark Bill (MTB)

1966 Uniform Deceptive Trade Practices Act (UDTPA). What constitutes infringement of a registered trademark

use in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive; or

reproduce, counterfeit, copy or colorably imitate a registered mark and apply such reproduction,

counterfeit, copy or colorable imitation to labels, signs, prints, packages, wrappers, receptacles or advertisements intended to be used in commerce upon or in connection with the sale, offering for

266

sale, distribution, or advertising of goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive


Civil action; injunction against future printing of the mark; monetary damages; attorney fees; Website for public search of TMs and for requesting copies of TM Office records http://www.uspto.gov/web/trademarks/tmog/ Source for printed or electronic journals published by the TM Registry Office http://www.uspto.gov/web/trademarks/tmog/ Any other additional information

Trademarks may be protected by both Federal statute under the Lanham Act, and states' statutory and/or common laws (which do not require registration and protected as part of unfair competition)

Trademark law in the United States is entirely enforced through private lawsuits. The responsibility is entirely on the mark owner to file suit in either state or federal civil court in order to restrict an infringing use. Failure to "police" a mark by stopping infringing uses can result in the loss of protection.

267

Annex-II: IP Systems in European Union

Patent

The European territory is a host to a web of legislations on patents. Each European country has national legislation relating to intellectual property. These countries can be members of the European Union (EU), the European Patent Convention (EPC or the Convention), the Patent Cooperation Treaty (PCT) and the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS). The scope of each type of legislation and the relations between them are explained in this preliminary section before entering into the core of the subject, which is the EPC. European Patent Convention Most European countries are members of the European Patent Convention (EPC) which creates a system for what is called a European patent. This system is managed and implemented by the European Patent Office (EPO) which has several patent offices. This appellation of “European patent” can however be misleading as there is no such thing as a European patent, i.e. a patent which extends to all European countries. The EPC creates a system where patent applications can be filed in each individual national system obtaining several national patents. This single European application is deemed to designate all contracting states where the EPC has entered into force at the date of filing, although designations can be expressly withdrawn for certain member states. Once the application is filed, the designations of states must be confirmed by paying the national fees for the designation. A combination of national patents is therefore the de facto European patent. This European patent gives the proprietor of the patent the same rights as would be conferred by the national patents granted in the selected states. National Patent Laws The EPC refers to national patent laws for the definition of the rights granted by the European patent and for the enforcement of these rights, among other aspects. For this reason, although the EPC creates a system for patent application and granting at the European level, the national legislations are the ultimate reference. Therefore, in order to be properly informed of patent regulations, national laws must be consulted. European Union Directives Member countries of the European Union (currently 27) are subject to regulations and directives enacted by the EU. Therefore, in the field of patents, they had to adapt their national patent laws to the EU directives dealing with patents. These directives do not create a proper patent system themselves, but focus exclusively on specific aspects of patent protection.

Directive on the enforcement of intellectual property rights (Directive 2004/48/EC): refers to the available remedies in civil courts, leaving out the criminal offenses. This harmonizes the rules concerning standing, evidence, interlocutory measures, seizure, injunctions, damages, costs and judicial publication. (http://eur-lex.europa.eu/pri/en/oj/dat/2004/l_195/l_19520040602en00160025.pdf)

Directive on the legal protection of biotechnological inventions (Directive 98/44/EC): intends to harmonize the Member States’ rules regarding the patentability of biotechnological inventions and creates an obligation to protect biotechnological inventions (Art.1).

Country: European Union

http://eur-lex.europa.eu/pri/en/oj/dat/2004/l_195/l_19520040602en00160025.pdf

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Are patentable: • Inventions which are new, involve an inventive step and susceptible of industrial

application even though it consists or contains biological material or a process by means of which biological material is produced, processed or used (Art.3);

• Isolated biological material (Art.3(2)); • Inventions concerning plants or animals, if the invention is feasible on various plant or

animal varieties (Art.4(2)); and • Element of the human body isolated or produced by way of technical process,

including the partial or entire sequence of a gene (Art.5(1)). Are not patentable:

• Plant and animal varieties and essentially biological processes for the production of plants or animals (Art.4(1));

• The human body at various stages of development (Art.5(1)); and • Inventions where the commercial exploitation would be against public order or

morality, for instance: processes for cloning human beings, processes for modifying the germ line genetic identity of human beings, uses of human embryos for industrial or commercial purposes and processes for modifying the genetic identity of animals which are likely to cause them suffering without any substantial medical benefit to man or animal and animals resulting from those processes (Art.6).

The protection of a patent extends to: any biological material derived from the biological material patented through propagation or multiplication which has the same characteristics, the biological material directly obtained by a process patented and all material in which the patented product of genetic information is incorporated (Art.8 &9). Compulsory licensing for prior patents and plant variety rights are to be granted when the applicant for the license has unsuccessfully applied for a license to the holder of the patent or plant variety right and when the plant variety or invention is of considerable economic interest compared to the protected invention or plant variety (Art.12). (http://eur-lex.europa.eu/LexUriServ/LexUriServ.do?uri=OJ:L:1998:213:0013:0021:EN:PDF) The EU is a member of the WTO and is therefore subject to the TRIPS Agreement. The EU is not a member of the PCT, although all ET States are members of the PCT which therefore applies in the whole territory of the Union. Euro-PCT System Another method for applying for patents throughout Europe is known as the Euro-PCT application procedure. As all EPC member states are also signatories to the PCT Agreement, it is possible to file an international patent which will be comprised of two phases: 1) the international phase and 2) the European phase. The European phase of the international patent application is basically the European patent system. Basic information on acquisition of Patent rights Does your region have patent legislation in place [if not, please indicate its status, e.g. Bill under process] Yes, as explained above, European countries are subject to different legal frameworks. This template focuses on the European Patent Convention and only refers to national legislation when the Convention refers to national law to complete its scope. Germany and United Kingdom have been selected to provide concrete examples of national patent laws. The European Patent Convention can be found at the following link: http://www.epo.org/patents/law/legal-texts/epc.html. Currently, the European Patent Convention has 36 member states, comprising all the member states of the European Union

http://eur-lex.europa.eu/LexUriServ/LexUriServ.do?uri=OJ:L:1998:213:0013:0021:EN:PDF

http://www.epo.org/patents/law/legal-texts/epc.html

269

together with Croatia, the Former Yugoslav Republic of Macedonia, Iceland, Liechtenstein, Monaco, Norway, San Marino, Switzerland and Turkey. Title of legislation, year and major amendments in your region Convention on the Grant of European Patents (European Patent Convention): 5 October 1973, last revised on 17 December 1991 (Revision Act of 29 November 2000). Five protocols form the Convention. They are an integral part of the EPC and cover more specific subjects. These protocols are: • Protocol on the Interpretation of Article 69 EPC: 5 October 1973, last revised 28 June 2001

(Revision Act of 29 November 2000). It states that the extent of a patent protection should be interpreted as being a reasonable intermediate between fair protection for the proprietor and a reasonable degree of legal certainty for third parties.

• Protocol on the Centralization of the European Patent System and on its Introduction (Protocol on Centralization): 5 October 1973, last revised 28 June 2001 (Revision Act of 29 November 2000). The International Patent Institute set up by the Hague Agreement of 1947 is basically replaced by the European Patent Office.

• Protocol on Jurisdiction and the Recognition of Decision in respect of the Right to the Grant of a European Patent (Protocol on Recognition): 5 October 1973. It determines the jurisdiction in respect to court actions relating to the right to the grant of a European patent and also states that a final decision in a Contracting State is recognized, without needing any special procedure, in the other Contracting State.

• Protocol on Privileges and Immunities of the European Patent Organization (Protocol on Privileges and Immunities): 5 October 1973. It relates to the inviolability of the premises and the jurisdictional immunity of the European Patent Organization.

• Protocol on the Staff Complement of the European Patent Office at the Haque (Protocol on Staff Complement): 5 October 1973, last revised 28 June 2001 (Revision Act of 29 November 2000). It ensures that a certain proportion of posts are respected to the duty station at The Hague.

State whether your region is a member to the Patent Cooperation Treaty (PCT)

Yes, the Patent Cooperation Treaty of 19 June 1970 applies where the Treaty prevails over the EPC (Art.150 EPC). State whether your region is a member of World Trade Orgn (WTO) Yes, a total of 148 European states are members of the WTO comprising all member states to the EPC (Ancillary Regulations to the PCT, Part IV- OJ 2005, 291- Agreement establishing the World Trade Organization of 15 April 1994). Any essential requirement for foreigner/foreign organization to get protection in your region, e.g. presence of local agents/representatives Natural and legal persons having their residence or principal place of business outside the contracting states to the EPC are required to be represented by a professional representative or a legal practitioner (Art.134 EPC) except when filing an application or paying fees. EPO maintains a database of professional representatives online: http://www.epo.org/patents/Grant-procedure/representatives.html. Website to access legislation (indicate Internet link) http://www.epo.org/patents/law/legal-texts/epc.html

http://www.epo.org/patents/Grant-procedure/representatives.html

http://www.epo.org/patents/law/legal-texts/epc.html

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Registration formalities Protection criteria Necessary criteria: • Invention: must be an invention and not only a discovery. • Industrial application: must be usable or producible in any kind of industry. • Novelty: is not already part of the state of the art available to the public. • Inventive step: must not be obvious to a person skilled in the art of the invention. “Inventions” not patentable What is not considered an invention: • Discoveries • Scientific theories • Mathematical methods • Aesthetic creations • Schemes, rules and methods for mental acts, games or business • Programs for computers • Presentations of information • Surgery, therapy and diagnostic methods (for human or animal bodies) Inventions that are not patentable: • Inventions which the publication or exploitation would be contrary to “public order” or morality • Plant varieties • Animal varieties • Biological processes for the production of plants or animals, excluding microbiological processes and

it’s products Forms required to fill and submit A European patent application consist of a request for the grant of a European patent (Form 1001, which can be found at http://www.epo.org/patents/Grant-procedure/Filing-an-application/European-applications/forms.html), a description of the invention, claims and the drawings referred to in the description or claims and an abstract. Any special provisions/formalities The official languages of the EPO are English, French and German. Therefore, an application filed in any other language requires filing a translation into one of the official languages within two (2) months of filing the application. Duration of protection (years) Twenty (20) years from the date of filing the application. Patent Office contact details (Mailing address, phone, website, email, etc.) Depending on the national legislation of the contracting state in question, European patent applications might also be filed at the central industrial property office of the contracting state. National legislation must be consulted as it may demand the deposit of the application to be either at the national office or the EPO offices.

http://www.epo.org/patents/Grant-procedure/Filing-an-application/European-applications/forms.html


271

The EPO has several patent offices. European patents can be filed at the EPO headquarters in Munich and at the Hague and Berlin offices. Applications can be filed by post, fax, online or handed in personally, but not by email, telegram, telex or teletext, at all these locations: Munich postal address: 80298 Munich, Germany Tel. +49 89 2399-0 (http://www.epo.org/contact/munich-1.html) The Hague postal address: Postbus 5818 2280 HV Rijswijk, The Netherlands Tel. +31 70 340-2040 (http://www.epo.org/contact/the-hague.html) Berlin postal address: 10958 Berlin, Germany Tel. +49 30 259 01-0 (http://www.epo.org/contact/berlin.html) Filling by fax is permitted in all contracting states except for Cyprus, Estonia, Hungary, Italy, Netherlands, Romania and Turkey. State whether online submission is permitted, if so, indicate website Forms can be downloaded online from the EPO website. Submissions can also be filed online or on an electronic data carrier using Online Filing software obtained from EPO (http://www.epo.org/patents/law/legal-texts/html/guiex/e/a_ii_1_3.htm). An application can not be filed by email, telegram, telex or teletext. Cost (approx.)

Applicable to natural persons (i.e. individuals) and other natural persons (i.e. organizations)

(http://www.epo.org/patents/law/legal-texts/html/epc/2000/e/articl2.html?popup=yes)

In local currency (Euro)

b) Registration • Online: • Not online: • 36th page and more: • European supplementary search: • International supplementary search: • Designation fee for contracting states:

100 180 12/page 1 050 1 700 500

c) Examination • With supplementary European

search: • Without supplementary European

search:

1 405 1 565

c) Maintenance (renewal) • 3rd year: • 4th year: • 5th year: • 6th year:

400 500 700 900

75% reduction for a natural person who is both a national of and resident in a state which is not a party to the EPC and has a lower-middle income economy (CA/D 7/08).

http://www.epo.org/contact/munich-1.html

http://www.epo.org/contact/the-hague.html

http://www.epo.org/contact/berlin.html

http://www.epo.org/patents/law/legal-texts/html/guiex/e/a_ii_1_3.htm

http://www.epo.org/patents/law/legal-texts/html/epc/2000/e/articl2.html?popup=yes



272

• 7th year: • 8th year: • 9th year: • 10th and subsequent years:

1 000 1 100 1 200 1 350

d) Others, if any • Grant • Appeal • Technical opinion

790 1 120 3 345

Deposit requirements, if any For any invention involving biological material unavailable to the public and indescribable in a manner as to enable a person skilled in the art to reproduce, there must be deposit of the biological material. This deposit must be made following these criteria: • A sample of biological material is deposited with a recognized depositary institution in accordance

with the terms of the Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purpose of Patent Procedure (1977);

• The deposit must be made no later than the date of filing the patent application; • The application must give all relevant and available information of the deposited material; • As stated in the application, the application must contain the name of the depositary institution and

the accession number of the deposited material; • The name and address of the depositor are given in the application when the material is deposited by

another person than the applicant. Evidence of the authorization of such an application in the form of unreserved and irrevocable consent by the depositor must be given to make the material available to the public (Rule 31).

Length of processing and release of Certificate (approx.), e.g. length of publication, examination, etc. The grant procedure takes about three (3) to five (5) years from the date the application is filed. Rights conferred by the Act Major rights conferred to patentees The rights granted to the patentee are not specified in the EPC, which refers to those which would be given in the Contracting State in respect of which the patent is granted. Therefore, the relevant legislation in respect to rights and infringement of a European patent is the national law (Art.64 EPC). These rights start from the moment the grant is published in the European Patent Bulletin (Art.64 EPC). Examples of national legislations are given to illustrate the system: Germany: The patentee has the exclusive rights to use the patented invention, as to: • Make, offer, put on the market, use, import or stock for such previous uses a product subject to a

patent; • Use a process subject to a patent or offer this process for use in the territory; • Offer, put on the market, use, import or stock for such purposes the product directly obtained from a

patented process (s.9). Furthermore, a person not having the consent of the patentee can not supply or offer to supply a person other than a person entitled to exploit the patented invention with the means relating to essential elements for the exploitation of the invention (s.10(1)).

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United Kingdom: Any patent is a personal property (s.30(1)) Limitations on Patent rights (i.e. acts not constituting infringement, e.g. research exemptions) The EPC refers to national laws for specific limitations. Particularly relevant in this section is the research exemption limitation to patent rights. In the European Union, the Directive 2004/28/EC (s.13) and the Directive 2001/83/EC (s.10) have a research exemption relating to veterinary medicinal products and medicinal products for human use, respectively. The way national courts have interpreted the research exemption actually defines the scope of such exception, and varies very much from country to country, being Germany one of the countries which traditionally provides for a very broad interpretation of this limitation. Here are some examples as to how European national laws have regulated limitations to patents. Germany: The protection of the patent does not extend to acts done privately with no commercial purposes or acts done for experimental purposes relating to the subject matter of the patented invention (s.11). The latter has received a very wide interpretation by German Constitutional Court and is the most liberal experimental use exception known. Other limitations are provided in the law concerning extemporaneous preparation and vessels, aircrafts or vehicles (s.11). The effect of the patent does not extend to the exploitation of the invention which is ordered in the security of the Federal Republic by the supreme federal authority or its subordinate agency (s.13(1)). United Kingdom: Does not constitute infringement: • Act done privately with no commercial purpose; • Experiments relating to the subject-matter of the invention; • Agricultural use by a farmer of the product of his harvest for propagation or multiplication by him on

his own holding, where there has been a sale of a plant propagating material to the farmer with the consent of the patentee;

• Use of an animal or animal reproductive material by a farmer for an agriculture following a sale to the farmer with the patentee’s consent of breeding stock or animal reproductive material constituting or containing the patented invention;

• Act of experimental purposes done in a study, test, trial or any act required for the application of safety and residue tests or of pre-clinical and clinical trials demonstrating that the medicinal product is a generic of a reference medicinal product or generic veterinary medicinal product (application of Art. 13(1) to (5) of Directive 2001/82/EC or of Art.10(1) to (4) of Directive 2001/83/EC) (s.60(5)).

Listed in the legislation are other limitations on extemporaneous preparation and ships, aircrafts, hovercrafts or vehicles (s. 60(5)). An exemption from paying equitable remuneration to the rights holder of the relevant invention applies for what is considered to be a small farmer under Art. 14(3) (Schedule A1- Derogation from Patent Protection in Respect of Biotechnological Inventions, Art.4).

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Other information Date of priority and requirements A right of priority is recognized during a period of twelve (12) months from the date of filing a first application for a patent, a utility model or a utility certificate. This means that the date of filing of any latter application is presumed to be the date of filling of the previous application (Art.87 & 88 EPC). This right of priority is triggered when the first application is in: • Any State party to the Paris Convention for the Protection of Industrial Property; • Any Member of the World Trade Organization (Art.87 EPC). Many priorities can be claimed in respect of a European patent application, although the time limit runs from the earliest date of priority (Art.88 EPC). The right of priority covers the elements included in the prior application or applications (Art.88 EPC). Renewal process / procedure • Due the third and each subsequent year, from the date of filing. • Due on the last day of the month were the anniversary of the filing date falls. • A belated renewal fee must be made within 6 months on the due date and provide an additional fee

equal to 50% of the renewal fee. • Application is deemed to be withdrawn if no renewal fee is paid, in that case a request of

reestablishment of rights can be made under Article 122. Opposition formalities Up to nine (9) months after publication of the mention that a European patent has been given. Grounds of oppositions are: • Subject-matter is not patentable; • The disclosure is not clear and complete; • The subject-matter extends beyond the content of the application. Indicates at least one ground of opposition, the facts, evidence and arguments in support of the ground(s). There is a suggested EPO opposition form available, Form 2300 (http://www.epo.org/patents/Grant-procedure/Filing-an-application/European-applications/forms.html). What constitutes infringement of a patented invention The EPC refers to national laws in order to delimit infringement. Generally, infringement occurs when, during the term of the patent protection and without the consent of the proprietor of the patent, the invention, inventive process or the product of the process is made, disposed of, offered to be disposed of, used, imported or kept for disposal or otherwise used or offered to be used in the relevant territory. (United Kingdom: The Patents Act 1977, s.60; Germany: German Patent Law, s.9). Exceptions to this general rule are different form one country to another (see for example research exemptions under the section Limitations on Patent Rights).


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Remedies for infringement The EPC again refers to national laws. Examples: Germany: Claims can be made in front of the Court for: 1) compensation for the damage suffered (s.139(2), 2) indemnity within the limits of the damage suffered and the profits accrued to the infringer (s.139(2)), 3) destruction of the product or devices used for the patented process (s.140a), 4) and information on the origin and distribution channels of the invention (s.140b). United Kingdom: (s.61) Proceedings can be brought in court where claims can be made for: 1) an injunction or interdict restraining the defendant from any apprehended act of infringement, 2) an order for the defendant to deliver or destroy any patented product related to the patent, 3) any damages in respect of the infringement, 4) an account of the profits made from the infringement and 5) a declaration that the patent is valid and has been infringed upon (s. 61(1)). Damages and an account of the profits cannot both be awarded to the proprietor of the patent (s. 61(2)). Any relationship with other legislations in your region The EPC applies to all signatory states within Europe and refers to national law for several aspects of patents (i.e. rights conferred and infringement). This can be explained by the fact that a European patent is in fact a cumulation of national patents throughout Europe. National law is therefore very important to be checked. Some signatory states to the EPC are also members of the EU and therefore have further legal dispositions regulating their national laws (see European Union particularities in the introductory box above). Website for public search of patents and for requesting copies of Patent Office records https://data.epo.org/publication-server/?lg=en Source for printed or electronic journals published by the Patent Authority http://www.epo.org/about-us/publications/official-periodicals.html Provision for compulsory/voluntary licensing [Y or N] No, there is no compulsory or voluntary licensing provision in the EPC. Here are some examples of how Germany and the United Kingdom have regulated compulsory/voluntary licensing: Germany: The Federal Government can order that a patented invention be exploited in the interest of public welfare (S.13). A compulsory license can be granted when the public interest requires it or when an applicant has unsuccessfully tried for a reasonable amount of time to obtain a license on reasonable terms and the patentee does not use enough the invention (s.24). United Kingdom: After the expiration of three (3) years from the grant of the patent (or any other period prescribed), any person may apply on one or more of the relevant grounds for:

https://data.epo.org/publication-server/?lg=en

http://www.epo.org/about-us/publications/official-periodicals.html

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• A license under the patent; • An entry in the register to the effect that licenses under the patent are available as a right; • The grant to any person specified in the application of a license under the patent when the applicant

is a government. (S.48(1)) Where the patent holder is a WTO member and reasonable efforts have been made to obtain within a reasonable period a license of reasonable terms from this patent proprietor, but where unsuccessful, the license can be granted when: • The demand in UK for the product is not being met on reasonable terms; • The refusal of granting a license or licenses on reasonable terms causes: 1) the exploitation in the UK

of any other patented invention involving an important technical advance or economic significance to be prevented or hindered or 2) the establishment or development of commercial or industrial activities in the UK to be unfairly prejudiced;

• The conditions imposed by the patent holder causes the manufacture, use or disposal of materials not protected by the patent, or the establishment or development of commercial or industrial activities in the UK to be unfairly prejudiced (48A(1) &(2)),

Any other additional information --

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Basic information on acquisition of PVP rights Does your country/region have PVP legislation in place [if not, please indicate its status, e.g. Bill under process] Yes, all countries in Europe have legislation on PVP inspired by the UPOV Convention. In addition, the European Union (EU) has created a PVP system which allows PVP over a plant variety in the whole territory of the European Union, through the so called Community plant variety rights. This Community system withstands with the national PVP systems of the EU countries, which grant protection within the national territories only. The granting of the Community plant variety rights is managed by the Community Plant Variety Office. This description focuses on the Community plant variety rights. All the information provided below refers to the granting of PVP under this EU/Community system. Because of the nature of the EU regulations, the four Regulations on Community plant variety rights became law in all Member States the moment they came into force, without the requirement for any implementing measures, and automatically overrode conflicting domestic provisions. Community plant variety rights shall have uniform effect within the territory of the Community and may not be granted, transferred or terminated otherwise than on a uniform basis. Any variety which is the subject matter of a Community plant variety right shall not be the subject of a national plant variety right or any patent for that variety. Any rights granted shall be ineffective. Title of legislation, year and major amendments in your country The legislation is structured in four European Council Regulations:

1. Basic Regulation Council Regulation (EC) No 2100/94 of 27 July 1994 on Community plant variety rights (OJ L 227 of 01.09.94 p.1). Amended in 95, 96, 2003, 2004 and 2008.

2. The implementing rules of the Basic Regulation Commission Regulation (EC) No 1239/95 of 31 May 1995 establishing implementing rules for the application of Council Regulation (EC) No 2100/94 as regards proceedings before the Community Plant Variety Office (OJ L 121 of 01.06.95 p.37). Amended in 96, 2002, 2005 and 2008.

3. The fees Regulation Commission Regulation (EC) No 1238/95 of 31 May 1995 establishing implementing rules for the application of Council Regulation (EC) No 2100/94 as regards the fees payable to the Community Plant Variety Office (OJ L 121 of 01.06.95 p.37). Amended in 2000, 2003, 2005 and 2008.

4. Implementing rules on the agricultural exemption to Community plant variety rights provided for in Article 14 of the Basic Regulation

Commission Regulation (EC) No 1768/95 of 24 July 1995 implementing rules on the agricultural exemption provided for in Article 14 (3) of Council Regulation (EC) No 2100/94 on Community plant variety rights (OJ L 173 25.07.95 p.14). Amended in 1998.


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Type of protection (include special features, if any) e.g. Patent or PVP registration or both* Plant Variety Protection. State whether your country is member of the UPOV Convention Yes. All EU countries are members of the UPOV Convention. The EU is member of the UPOV Convention. Any essential requirement for foreigner/foreign organization to get protection in your country, e.g. presence of local agents/representatives Nationals or domiciled in other States, which are not Members States of the EU or UPOV, have to request the permission of the Commission. Such decision may be depend on the other State offering protection of the same botanical taxon to nationals of all the Member States. Website to access legislation (indicate Internet link) http://www.cpvo.europa.eu/main/en/home/community-plant-variety-rights/legislation-in-force Registration formalities Types of varieties that can be protected e.g. new, extant variety, farmer’s variety, Essentially Derived Varieties (EDV) Varieties of all botanical genera and species, including, inter alia, hybrids between genera or species, may form the object of Community plant variety rights. Whether protection is through notification, if yes, please state the crops notified for protection No. Protection criteria (DUS etc.) Community plant variety rights shall be granted for varieties that are:

1. Distinct: a variety shall be deemed to be distinct if it is clearly distinguishable, by reference to the expression of the characteristics that result from a particular genotype or combination of genotypes, from any other variety whose existence is a matter of common knowledge.

2. Uniform: a variety shall be deemed to be uniform if, subject to the variation that may be expected from the particular features of its propagation, is sufficiently uniform in the expression of those characteristics which are included in the examination of distinctness, as well as any others used for the variety description.

3. Stable: a variety shall be deemed to be stable if the expression of the characteristics, which are included in the examination for distinctness as well as any others used for the variety description, remain unchanged after repeated propagation or, in the case of a particular cycle of propagation, at the end of each such cycle.

4. Novel: a variety shall be deemed to be new if, at the date of application, variety constituents or harvested material of the variety have not been sold or otherwise disposed of to others, by or with the consent of the breeder for purposes of exploitation of the variety:

(a) earlier than one year before the abovementioned date, within the territory of the Community (b) earlier than four years or, in the case of trees or of vines, earlier than six years before the said date, outside the territory of the Community.

The specific test guidelines are available in this link: http://www.cpvo.europa.eu/main/en/home/technical-examinations/technical-protocols What cannot be protected There are no negative criteria; if the variety falls within the definition of the regulation it can be registered.

http://www.cpvo.europa.eu/main/en/home/community-plant-variety-rights/legislation-in-force

http://www.cpvo.europa.eu/main/en/home/technical-examinations/technical-protocols

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Forms required to fill and submit An application for a Community plant variety right shall be filed at the European Community Plant Variety Office in duplicate, at one of the entrusted sub-offices or at national agencies in triplicate. The Office shall make the following forms available free of charge, to be filled out and signed by the applicant: (a) an application form and a technical questionnaire, for the purposes of filing an application for a Community plant variety right; (b) a form for forwarding the information (identification of the applicant or his procedural representative and the national agency or sub-office at with the application has been filed and the provisional designation of the variety concerned) indicating the consequences of any failure of the forwarding. Any special provisions/formalities The application should contain information on: a) a request for the grant of a Community plant variety right; (b) identification of the botanical taxon; (c) information identifying the applicant or, where appropriate, the joint applicants; (d) the name of the breeder and an assurance that, to the best of the applicants knowledge, no further persons have been involved in the breeding, or discovery and development, of the variety; if the applicant is not the breeder, or not the only breeder, he shall provide the relevant documentary evidence as to how the entitlement to the Community plant variety right came into his possession; (e) a provisional designation for the variety; (f) a technical description of the variety; (g) the geographic origin of the variety; (h) the credentials of any procedural representative; (i) details of any previous commercialization of the variety; (j) details of any other application made in respect of the variety. (k) variety denomination Duration of protection (years) For varieties of vine and tree species, until the end of the 30th calendar year, following the year of grant. For the rest, the protection shall run until the end of the 25th calendar year, following the year of grant. Registry Office contact details (Mailing address, phone, website, email, etc.) Central Office Visitors address: Community Plant Variety Office 3, boulevard Maréchal Foch, FR – 49000 ANGERS TEL : (+33)(0)2-41.25.64.00 , FAX : (+33)(0)2-41.25.64.10 Postal address: Community Plant Variety Office 3, boulevard Maréchal Foch, BP 10121, FR - 49101 Angers Cedex 02 Website: http://www.cpvo.europa.eu/main/en E-mail : [email protected] National agencies Details of the PVP offices in the 27 State Members of the EU can be found at the UPOV webpage: http://www.upov.org/en/about/members/pvp_offices.htm


http://www.upov.org/en/about/members/pvp_offices.htm

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State whether online submission is permitted, if so, indicate website Yes. http://www.cpvo.europa.eu/main/en/home/filing-an-application/online-forms Cost (approx.) Eur 1 = USD 1.40


Other than natural persons (i.e. organizations)*

For detailed information: http://www.cpvo.europa.eu/main/en/home/methods-of-payment/applicable-fees *The CPVO does not make any difference between natural and legal persons.

in EUR in US $ in local currency

in US $

d) Registration

900 1260 -- --

e) Examination * fees due to be paid depends on which species the variety belongs to.

1160-2500 1624-3500 -- --

f) DUS Test *The DUS costs are included in the examination expenses.

-- -- -- --

g) Maintenance (renewal) *Annual fee.

300 420 -- --

e) Others, if any Fee for taking over reports Appeal fee An application for a compulsory exploitation right

A request for: transfer of a Community plant variety right, contractual exploitation right, Identification of varieties as initial or essentially derived, transfer of entitlement in a civil law claim or acknowledgement of an essentially derived variety and Community plant variety right given as a security or as the subject of rights in rem.

A request for any entry into the Register of Applications

Issue of non-certified and certified copies of documents relating to an application Delivery of an extract from the Register of Applications

240 1500 1500 100 100 10-20 20

336 2100 2100 140 140 14-28 28

-- -- -- -- -- -- --

-- -- -- -- -- -- --

Deposit requirements, if any Samples of material have to be submitted in order to proceed to examine it technically. Length of processing and release of Certificate (approx.), e.g. length of publication, examination, etc. It depends on the crop; for ornamental varieties about a year, for trees it can take five years. Also, it varies among the central office, the sub offices and the national agencies.

http://www.cpvo.europa.eu/main/en/home/methods-of-payment/applicable-fees

http://www.cpvo.europa.eu/main/en/home/methods-of-payment/applicable-fees

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Rights conferred by the Act Major plant breeders’ rights The following acts shall require the authorization of the Community plant variety right’s holder in respect of the variety or the harvested material of the variety: (a) production or reproduction (multiplication); (b) conditioning for the purpose of propagation; (c) offering for sale; (d) selling or other marketing; (e) exporting from the Community; (f) importing to the Community; (g) stocking for any of the purposes mentioned in (a) to (f). The holder may make his authorization subject to conditions and limitations. These rights shall also apply in relation to: (a) varieties which are essentially derived from the protected variety where this variety is not itself an essentially derived variety; (b) varieties which are not distinct in accordance with the Regulation; and (c) varieties whose production requires the repeated use of the protected variety. The rights shall apply in respect of harvested material or products obtained directly from material of the protected variety only if these were obtained through the unauthorized use of the protected variety, and unless the holder has had reasonable opportunity to exercise his right in relation to the said variety. The exercise of the rights conferred by Community plant variety rights may not violate any provisions adopted on the grounds of public morality, public policy or public security, the protection of health and life of humans, animals or plants, the protection of the environment, the protection of industrial or commercial property, or the safeguarding of competition, of trade or of agricultural production. Farmers’ rights There is no reference to Farmers’ rights in the EU regulation. Exemptions to farmers, if any For the purposes of safeguarding agricultural production, farmers are authorized to plant, on their own holding, the product of the harvest obtained by planting a variety which is covered by a Community plant variety right. This legal provision shall only apply to some agricultural plant species (article 14.2 of the Regulation 2100/94). Farmers (except for small farmers) are required to pay an equitable remuneration to the holder sensibly lower than the amount charged for the licensed production of propagating material of the same variety in the same area. Regulation 1768/95 explains the criteria to define small farmers. Research exemptions The Community plant variety rights shall not extend to acts done for experimental purposes and for acts done for the purpose of breeding or discovering and developing other varieties. Other information Date of priority and requirements The date of application for a Community plant variety right shall be the date on which a valid application was received by the Office or by a sub-office or national agency and subject to payment of the fees due within a time limit specified by the Office.

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The right of priority of an application shall be determined by the date of receipt of the application. Where applications have the same date of application, the priorities thereof shall be determined according to the order in which they were received, if this can be established; otherwise they shall have the same priority. If the applicant or his predecessor in title has already applied for a property right for the variety in a Member State or in a Member of the International Union for the Protection of New Varieties of Plants, and the date of application is within twelve (12) months of the filing of the earlier application, the applicant shall enjoy a right of priority for the earlier application as regards the application for the Community plant variety right, provided the earlier application still exists on the date of application. Any claim for a right of priority earlier than that provided for in paragraph 2 shall lapse if the applicant does not submit to the Office within three months of the date of application copies of the earlier application that have been certified by the authorities responsible for such application. If the earlier application has not been made in one of the official languages of the European Communities, the Office may require, in addition, a translation of the earlier application in one of these languages. Priority of a new application in the case of objections Where an objection on the grounds that the conditions of entitlement to Community plant varieties are not met leads to the withdrawal or refusal of the application for a Community plant variety right and if the objector files an application for a Community plant variety right within one month following the withdrawal or within one month of the date on which the refusal becomes final in respect of the same variety, he may require that the date of the withdrawn or refused application be deemed to be the date of his application. Renewal process / procedure In order to pay the title in force, the title holder needs to pay the annual fee. Opposition formalities Any person may lodge with the Office a written objection to the grant of a Community plant variety right. Objectors shall be party to the proceedings for grant of the Community plant variety right in addition to the applicant. Objectors shall have access to the documents, including the results of the technical examination and the variety description Objections may be based only on the following elements: (a) the conditions of distinctiveness, uniformity, stability and novelty; (b) variety denomination. Objections may be lodged; (a) at any time after the application and prior to a decision about the denomination of the variety; (b) within three months of the publication of the proposed variety denomination. What constitutes infringement of a protected variety in your country (e.g. Producing, selling, importing and exporting of a registered variety without the permission of its breeder, etc.) Actions that: (a) effect one of the acts reserved to the holder without being entitled to do so, in respect of a variety for which a Community plant variety right has been granted; (b) omit the correct usage of a variety denomination; (c) use the variety denomination or a designation that may be confused with it Remedies for infringement Holder of the right may sue whoever takes any of the actions listed above (“what constitutes infringement) and be paid reasonable compensation for the damages suffered as a consequence of those actions. Those entitled by the holder to exploit the rights granted by the PVP or part of them are also allowed to bring actions against infringement, whenever the contrary has not been expressly agreed. Those enjoying exploitation grants can intervene in infringement processes initiated by the holder with the purpose of

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being compensated for possible damages suffered. Actions against infringements can be brought to national courts of any EU Member State, which shall treat the Community plant variety plant as valid. The Lugano Convention on Jurisdiction and Enforcement of Judgments in Civil and Commercial matters shall apply. Any relationship with other legislations in your country It is related to all the national legislation of the Member States of the European Union and to the Lugano Convention on Jurisdiction and Enforcement of Judgments in Civil and Commercial matters for infringement processes. Brief note on benefit sharing mechanism to farmers / communities There is no benefit sharing mechanism under the Community Plant Variety Regulation. Website for public search of PVP registrations and for requesting copies of PVP Office records http://www.cpvoextranet.cpvo.europa.eu/WD120AWP/WD120Awp.exe/CONNECT/ClientExtranet Source for printed or electronic journals published by the PVP Authority Official gazette http://www.cpvo.europa.eu/main/en/home/documents-and-publications/official-gazette Annual reports http://www.cpvo.europa.eu/main/en/home/documents-and-publications/annual-reports. Provision for compulsory/voluntary licensing [Y or N] Yes, article 29 of the EC 2100/94 establishes a compulsory exploitation right and article 27 establishes a contractual exploitation right. Any other additional information --

http://www.cpvoextranet.cpvo.europa.eu/WD120AWP/WD120Awp.exe/

http://www.cpvo.europa.eu/main/en/home/documents-and-publications/official-gazette

http://www.cpvo.europa.eu/main/en/home/documents-and-publications/annual-reports

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Copyright

Copyright law is nationally based. This means that each member of the European Union has its own sets of laws in relation to copyright law. European copyright law or better copyright law of the European Union consists of a number of Directives and judgments of the European Court of Justice and the Court of First Instance. Directives and judgments have harmonised certain aspects of copyright law among EU Member States. Further, all EU Member States are members of the Berne Convention for the Protection of Literary and Artistic Works (the “Berne Convention”) which is the main international legal instrument to create some basic common grounds. However, the Berne Convention refers to the application of the national laws of the specific signatory state where protection of the work is sought. Therefore, national law of individual EU Member States is very important and there are still many differences among states which go almost to the core of the protection, e.g. who is an author, what are moral rights, etc. Further, in 1996 the World Intellectual Property Organization (“WIPO”) passed the World Intellectual Property Organization Copyright Treaty (“the WIPO Copyright Treaty”) which provides additional protections for copyright due to the development in information technology. European Union Directives EU Member States (currently 27) are subject to regulations and directives enacted by the EU; directives are legal instruments that Member States must enact into their national laws. The Copyright Directive (the “Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the harmonization of certain aspects of copyright and related rights in the information society” also known as the “Information Society Directive”), is a directive which intended to implement the WIPO Copyright Treaty to which the European Union is a party. Further, there are seven Directives in the field of copyright and related rights in the European Union.

o Computer Programs Directive (Council Directive 91/250/EEC of 14 May 1991) on the legal protection of computer programs

o Rental Right Directive (Council Directive 92/100/EEC of 19 November 1992) on rental right and lending right and on certain rights related to copyright in the field of intellectual property

o Term Directive (Council Directive 93/98/EEC of 29 October 1993) harmonizing the term of protection of copyright and certain related rights

o Satellite and Cable Directive (Council Directive 93/83/EEC of 27 September 1993) on the coordination of certain rules concerning copyright and rights related to copyright applicable to satellite broad-casting and cable retransmission

o Database Directive (Directive 2001/29/EC of 22 May 2001) on the harmonization of certain aspects of copyright and related rights in the information society

o Resale Right Directive (Directive 2001/84/EC of 27 September 2001) on the resale right for the benefit of the author of an original work of art

Typically copyright laws vary considerably between Member States, particularly between common law countries (like in the United Kingdom, Cyprus, Ireland, and Malta) and civil law countries (like Italy, France, Spain, and Germany). The main differences are copyright vs. authors’ right (copyright for common law countries; authors’ right for civil law countries); UK for example define copyright as “property right”, while civil law countries define authors’ rights as human rights; this means that property right is something which can be traded in accordance with economic rules. Thus, a fundamental difference between these two sets of countries is on moral rights: common law countries consider moral rights as tradable/assignable while civil law countries consider moral rights as inalienable/never to be detached from the author. Therefore, in common law countries, for example, employees are expected to give up their rights to the employer, including moral rights. Due to these differences, the laws of two specific EU Members States will be analyzed, namely that one of the United Kingdom and of France.


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Basic information on acquisition of Copyright protection Does your country have Copyright legislation in place [if not, please indicate its status, e.g. Bill under process] Yes Title of legislation, year and major amendments in your country United Kingdom The Copyright, Designs and Patents Act 1988 Act, which came into force on 1 January 1989. Minor amendments were made in 1990 and 1991 and then in conjunction with the European Directives highlighted above. France Code de la Propriété Intellectuelle (“Intellectual Property Code”) which incorporates European Directives. Also in 2006 the French Parliament passed the Loi sur le Droit d'Auteur et les Droits Voisins dans la Société de l'Information ("Law on authors’ rights and related rights in the information society”) also known as DADVSI which amended French copyright law mainly to implement the 2001 European Directive on Copyright which in turns implement the WIPO Copyright Treaty. State whether your country is a member of Berne Convention for the International Registration of Copyrights Yes – both the United Kingdom and France. Any essential requirement for foreigner/foreign organization to get protection in your country, e.g. presence of local agents/representatives The foreign citizens must belong to a country which is party to the Berne Convention. Website to access legislation (indicate Internet link) United Kingdom http://www.opsi.gov.uk/acts/acts1988/UKpga_19880048_en_1.htm France http://www.assemblee-nationale.fr/12/dossiers/031206.asp http://www.legifrance.gouv.fr/html/codes_traduits/cpialtext.htm Registration formalities Protection criteria United Kingdom Original work, translation or adaptation of a work in which copyright subsists. France Original work, translation or adaptation of a work in which copyright subsists. Types of works entitled for Copyright protection (e.g. books, periodicals, artistic creations, etc.) United Kingdom

• Chapter I, articles 3-8 (UK Copyright, Designs and Patents Act 1988) 1.Literary, dramatic, musical or artistic works; 2. Sound recordings; 3. Films; 4. Broadcasts; 5. Typographical arrangements; 6. Cable programmes; 7. Published editions

http://www.opsi.gov.uk/acts/acts1988/UKpga_19880048_en_1.htm

http://www.assemblee-nationale.fr/12/dossiers/031206.asp

http://www.legifrance.gouv.fr/html/codes_traduits/cpialtext.htm

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• Copyright (Computer Programs) Regulations - which implemented the EC Directive on the Protection of Computer Programs of 1993

Computer programs - protected on the same basis as literary works

• Database Directive (2001/29/EC) Computer databases France

• Art. 112 – 2 (Code of Intellectual Property)

1. Books, pamphlets and other literary, artistic and scientific writings; 2. Lectures, addresses, sermons, pleadings and other works of such nature; 3. Dramatic or dramatico-musical works; 4. Choreographic works, circus acts and feats and dumb-show works, the acting form of which is set down in writing or in other manner; 5. Musical compositions with or without words; 6. Cinematographic works and other works consisting of sequences of moving images, with or without sound, together referred to as audiovisual works; 7. Works of drawing, painting, architecture, sculpture, engraving and lithography; 8. Graphical and typographical works; 9. Photographic works and works produced by techniques analogous to photography; 10. Works of applied art; 11. Illustrations, geographical maps; 12. Plans, sketches and three-dimensional works relative to geography, topography, architecture and science; 13. Software, including the preparatory design material; 14. Creations of the seasonal industries of dress and articles of fashion.

• Art. L. 112-3 (Code of Intellectual Property)

The authors of translations, adaptations, transformations or arrangements of works of the mind shall enjoy the protection afforded by this Code, without prejudice to the rights of the author of the original work. The same shall apply to the authors of anthologies or collections of miscellaneous works or data which, by reason of the selection or arrangement of their contents, constitute creations of the mind.

Types of works not entitled for Copyright protection United Kingdom Ideas, names, titles and internet domain names, and more generally what is not transcribed into writing or tangible form. France Ideas and anything that is not transcribed in writing or tangible form. Forms required to fill and submit No formalities are required. Any special provisions/formalities United Kingdom There is no official copyright register because copyright is automatic. There are, however, a number of companies that offer unofficial copyright registers normally at low costs like UK Copyright Service.

France No formalities are required. Duration of protection (years) United Kingdom

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1. Literary, dramatic, musical or artistic works - 70 years from the end of the calendar year in which the last remaining author of the work dies.

2. Sound Recordings and broadcasts - 50 years from the end of the calendar year in which the work was created, or, if the work is released within that time: 50 years from the end of the calendar year in which the work was first released.

3. Films - 70 years from the end of the calendar year in which the last principal director, author or composer dies. If the work is of unknown authorship: 70 years from end of the calendar year of creation, or if made available to the public in that time, 70 years from the end of the year the film was first made available.

4. Typographical arrangement of published editions - 25 years from the end of the calendar year in which the work was first published.

5. Broadcasts and cable programmes - 50 years from the end of the calendar year in which the broadcast was made.

France The general rule is that the proprietary rights of the author last for seventy (70) years after his or her death (Art. L123-1) or for one hundred (100) years after the author’s death if the author is declared to have died on active service (Art. L123.10). The author is deemed to have died on 31 December of the year of death. Registry Office contact details (Mailing address, phone, website, email, etc.) There are no registration offices as registration of Copyright is not necessary. However, information in relation to it can be sought and found at : United Kingdom Intellectual Property Office Concept House, Cardiff Road, Newport, South Wales, NP10 8QQ, United Kingdom Phone: +44 (0)1633 814000 France 3 rue de Valois (4ème étage) F-75001 Paris Phone: +33(1)40153859 State whether online submission is permitted, if so, indicate website N/A Cost (approx.) in local currency (specify) in US $ N/A Rights conferred by the Act Major rights conferred to CR owners United Kingdom

• UK Copyright, Designs and Patents Act 1988 (ss. 17-21): the owner of the copyright in a work has, in accordance with the following provisions of this Chapter, the exclusive right to:

1. copy the work;

2. issue copies of the work to the public;

3. perform, show or play the work in public;

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4. broadcast the work or include it in a cable programme service;

5. make an adaptation of the work or do any of the above in relation to an adaptation.

France

• Art. L. 122-6 (Code of Intellectual Property), the exploitation right belonging to the author of the software shall include the right to do or to authorize:

1. the permanent or temporary reproduction of software by any means and in any form, in part or in whole;

2. the translation, adaptation, arrangement or any other alteration of software and the reproduction of the results;

3. the placing on the market for consideration or gratuitously, including rental, of the software or of copies thereof by any process. However, the first sale of a copy of software on the territory of a Member State of the European Community or of a State party to the agreement on the European Economic Area by the author or with his consent shall exhaust the right of placing on the market of that copy in all Member States, with the exception of the right to authorize further rental of a copy.

Exemptions United Kingdom

• UK Copyright, Designs and Patents Act 1988 (ss.29-36): 1. Research and private studies; 2. Criticisms, review and news reporting; 3. Incidental inclusion of copyright material; 4. Educational purposes; 5. France

• Art. L. 122-5 (Code of Intellectual Property)

Once a work has been disclosed, the author may not prohibit:

l. private and gratuitous performances carried out exclusively within the family circle;

2. copies or reproductions reserved strictly for the private use of the copier and not intended for collective use, with the exception of copies of works of art to be used for purposes identical with those for which the original work was created and copies of software other than backup copies made in accordance with paragraph II of Article L. 122-6-1;

3. on condition that the name of the author and the source are clearly stated:

(a) analyses and short quotations justified by the critical, polemic, educational, scientific or informatory nature of the work in which they are incorporated;

(b) press reviews;

(c) dissemination, even in their entirety, through the press or by telediffusion, as current news, of speeches intended for the public made in political, administrative, judicial or academic gatherings, as also in public meetings of a political nature and at official ceremonies;

(d) complete or partial reproductions of works of graphic or three-dimensional art intended to appear in the catalogue of a sale by public auction held in France by a public or ministerial officer, in the form of the copies of the said catalogue that he makes available to the public prior to the sale for the sole purpose of describing the works of art on sale.

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A decree in Council of State shall determine the characteristics of the documents and the conditions governing their distribution.

4. Parody, pastiche and caricature, observing the rules of the genre

Other information Date of priority and requirements In all European jurisdictions copyright protection is automatic from the moment the work is fixated in some physical form. Once reduced to physical form, provided it is an original work (in the sense of not having been copied from an existing work), then copyright in it vests automatically in (i.e. is owned by) the author: the person who put the concept into material form. There are exceptions to this rule, depending upon the nature of the work, if it was created in the course of employment. The use of (c) “all rights reserved” is used to communicate to users that the work is copyrighted and that the author/employer reserves all the rights conferred to him/her by law. Opposition formalities There is no system of formal examination, publication and opposition. A party can only bring a claim for breach of copyright where the claimant needs to prove that his/her work had been copied by the alleged copyright holder. What constitutes infringement of a copyrighted material United Kingdom Under the law of the United Kingdom, there are two classes of infringements: (1) primary; and (2) secondary. 1. Primary: - copying/ - issuing copies to the public/ - performing, showing or playing work in public - broadcasting or including the work in a cable programme service/ - making adaptation or acts done in relation to adaptation 2. Secondary - importing infringing copies/ - possessing or dealing with infringing copies - providing means for infringing copies/ - permitting use of premises for infringing performance - providing apparatus for infringing performance France The carrying out of any of the activities listed above as belonging to the copyright holder without the necessary authorisation. Renewal process / procedure No registration Any relationship with other legislations in your country Relation with Trademark Act 1994: the copyright may apply to the artistic work which has an associated mark . Source for printed or electronic journals published by the Copyright Authority No printed or electronic journal available Searching and Request for copies of Copyright Office records [Y or N] N/A Any other additional information --

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A geographical indication (GI) is a name or sign used on certain products which corresponds to a specific geographical location or origin (e.g. a town, region, or country). The use of a GI may act as a certification that the product possesses certain qualities, or enjoys a certain reputation, due to its geographical origin and the manner it is produced. GI is regulated both on an International and European level. On an international level the WTO Regulated Aspects on Intellectual Property Rights (“TRIPS”) of 1994 set out two basic obligations that WTO Members States must comply with: 1. Article 22 - all governments must provide legal opportunities in their own laws for the owner of a GI registered in that country to prevent the use of marks that mislead the public as to the geographical origin of the good. This includes prevention of use of a geographical name which although literally true "falsely represents" that the product comes from somewhere else; 2. Article 23 - all governments must provide the owners of GI the right, under their laws, to prevent the use of a geographical indication identifying wines not originating in the place indicated by the geographical indication. This applies even where the public is not being misled, where there is no unfair competition and where the true origin of the good is indicated or the geographical indication is accompanied by expressions such as "kind", "type", "style", "imitation" or the like. Similar protection must be given to geographical indications identifying spirits. Under European Union Law, GI, or also referred generically as “Protected Indications” are protected via a system that came into effect in 1992 regulating three types of geographical indications, namely Protected designation of origin (PDO) and Protected geographical indication (PGI) and Traditional Specialty Guaranteed (TSG). PDOs and PGIs are the most common types of GIs within the European Union. The EU Member States which have been most active within the area are France, Italy and Spain, which hold the biggest number of Protected Indications (France holds 131 Protected Indications, between PDO and PGI; Italy holds 118, while Spain holds 67). The EU has not implemented any system for the protection of geographical indications handicrafts or other processed products. Basic information on acquisition of GI protection Does your country have Geographical Indications legislation in place [if not, please indicate its status, e.g. Bill under process] Yes, within the EU the Customs Regulation 1383/2003 regulates Protected Indications treating it as intellectual property rights. Title of legislation, year and major amendments in your country Council Regulation (EC) No 510/2006 of 20 March 2006 which sets out the requirements for PDO and PGI and application procedures; modified by Regulation (EC) 1791/2006; and Regulation (EC) 628/2008 to amend the specification by increasing the maximum weight of male calf carcasses from 250 to 270 kg, and that of female calf carcasses from 220 to 250 kg. Further, a series of Commission Regulations to enter specific names into the register to protected geographical indications and protected denomination of origins, e.g. Prosciutto di Norcia (Italy).


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Also the following EU laws apply: - Regulation (EC) 509/2006 on the requirements for agricultural products and foodstuffs to qualify as traditional specialties guaranteed. The Commission registers as traditional specialties guaranteed all agricultural products and foodstuffs that comply with certain specifications concerning their composition or method of production; -Directive 2000/13/EC on the labeling of foodstuffs supplied to the ultimate consumer and certain aspects relating to presentation and advertising. State if any other legislation takes care of GI registrations in your country [If there is no legislation, please indicate how best it can be protected in your country] Not Applicable Any essential requirement for foreigner/foreign organization to get protection in your country, e.g. presence of local agents/representatives The foreigner/foreign organization must produce its product within a specific region of the EU and with a specific method which may attract protection. Website to access legislation (indicate Internet link) Website : http://www.reading.ac.uk/foodlaw/f-eu-law.htm Registration formalities Protection criteria Protected designation of origin (PDO)- to classify as PDO the agricultural product or foodstuff must fulfill the following requirements: - it must come from such an area, place or (exceptionally) country; - its quality or properties are significantly or exclusively determined by the geographical environment, including natural and human factors; - its production, processing and preparation takes place within the determined geographical area. This means that the PDO product must be traditionally and entirely produced, prepared, and processed within the specific region which gives it specific and unique characteristics. Protected Geographical Indication (PGI) – to classify as PGI the agricultural product or foodstuff must fulfill the following requirements: - it must come from the area, place or country, as claimed; - it must have a specific quality and reputation, attributable to its geographical origin; - its production, processing or preparation takes place within the determined geographical area. This means that the product can be partially linked to the region but the reputation is such that it confers the specific characteristics. Traditional specialty guaranteed (TSG) – to acquire a TSG, the agricultural product or foodstuff must have a certain feature or sets of features, which distinguish it clearly from other similar products or foodstuffs. The product or foodstuff must be manufactured using traditional ingredients or must be characteristic for its traditional composition, production process, or processing reflecting a traditional type of manufacturing or processing. Grounds for refusal of registration Grounds to refuse a name or sign to qualify a PDO or PGI are if:

- the product or foodstuff fails to meet the required conditions as specified above; - the name has become generic, even if it relates to the area where the product or foodstuff are

produced; - the name may mislead the public as to its true origin; - the name is contrary to national dignity, religion, traditions and morality;

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- the name conflicts with a trade mark or agricultural product or animal breed, and therefore might mislead the public as to its origin.

Forms required to fill and submit An application for registration must be filed with the Member State in whose sovereign territory the relevant geographical area is situated (article 5(4) of Regulation 510/2006) in order to obtain protection. The application for registration must include:

- the name and address of the applicant group; - the product specification; - a single document setting out the main aspects of the product specification and a description of

the link between the product and its geographical area of origin. Applications can only be made by a group of producers or processors or, in exceptional cases, natural or legal persons. If the application concerns a cross-border area, it may be made jointly by several groups.


1.Examination

Within 12 months from receiving the application, the EU Commission checks whether the name meets the required conditions (described above). If the Commission believes that the name meets such conditions, it publishes the name in the Official Journal of the European Union (OJ). If the Commission believes that the conditions are not met then it rejects the application.

2. Objections

Within 6 months from the date of publication of the Commission decision in the OJ, any EU Member States, third countries, natural or legal person can bring an objection on the basis of the grounds for refusal listed above. If the Commission receives inadmissible objections, it will go ahead and register the name. If however the Commission believes that the objection is well grounded, the interested parties will be asked to come to an agreement on their divergences within 6 months. If and once they have reached an agreement, the Commission will be notified about the decision and the name will be registered. If the parties do not reach an agreement, the Commission decides taking into account fair practice and the actual likelihood of confusion to the public.

Duration of protection (years) Indefinite Registry Office contact details (Mailing address, phone, website, email, etc.) The Geographical Indications Registry of the individual EU Member State where indication is sought as belonging to that region or territory. State whether online submission is permitted, if so, indicate website Yes – websites depend on EU Member States. Cost (approx.) Member States may charge a fee to cover their costs, including those incurred in analyzing applications for registration, statements of objection, applications for amendments and requests for cancellations under this Regulation, e.g. in Germany the fee is around €900. Deposit requirements, if any Nil Length of processing and release of Certificate (approx.) In normal case 6 months, unless an objection is raised, in which case it might take up to 12 more months.

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Names which are registered are protected against:

- any misuse, imitation or evocation, even if the true origin of the product is indicated or if the protected name is translated or accompanied by an expression such as "style", "type", "method", "as produced in", "imitation" or similar;

- any other false or misleading indication as to the provenance, origin, nature or essential qualities of the product, on the inner or outer packaging, advertising material or documents relating to the product concerned, and the packing of the product in a container liable to convey a false impression as to its origin;

- any other practice which may mislead the consumer as to the true origin of the product; - commercial use of a registered name in respect of products not covered by the registration if they

are comparable to the products registered under that name or if this use exploits the reputation of the protected name.

Any exemptions / limitations / special provisions Art. 13(4) Regulation (EC) 510/2006 states that: The Commission may decide to allow, under the procedure provided for in Article 15(2), the coexistence of a registered name and an unregistered name designating a place in a Member State or in a third country where that name is identical to the registered name, provided that all the following conditions are met: (a) the identical unregistered name has been in legal use consistently and equitably for at least 25 years before 24 July 1993; (b) it is shown that the purpose of its use has not at any time been to profit from the reputation of the registered name and that the consumer has not been nor could be misled as to the true origin of the product; (c) the problem resulting from the identical names was raised before registration of the name. The registered name and the identical unregistered name concerned may co-exist for a period not exceeding a maximum of 15 years, after which the unregistered name shall cease to be used. Use of the unregistered geographical name concerned shall be authorized only where the country of origin is clearly and visibly indicated on the label. Other information Date of priority and requirements Date of submission of application and payment of the fee. Renewal process / procedure No renewal is required. However, a PDO or PGI can be cancelled by the Commission if : (a) the name has been registered in violation of the requirements set out in Regulation (EC) 510/2006; (b) natural or human factors which gave the specific characteristics to the product have changed. Opposition formalities Opposition can be applied within 6 months from the publication of the name on the EU OJ.

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What constitutes infringement of a registered GI product It is breach of a PDO or PGI if a name is used in a manner which does or may confuse or misled the public about the true origin of place of the product or if it constitutes an act of unfair competition including passing off (United Kingdom), as well as if it falsely represents a geographical place, including using expressions like ‘kind, type, style”. Any relationship with other legislations in your country The trademark acts of the individual EU Member States. As a general rule application to register trademark which carry the same name or similar name to a registered PDO or a PGI will be refused, so PDO or PGI have precedence. However, if the trademark was applied for, registered or established by use in good faith before the date of the protection in the country of origin or the date of submission to the Commission of the application for registration of the PDO or PGI the trademark will not be invalidated and can coexist with the PDO or PGI. Further, if an enterprise can show that it has traded for enough time to build reputation using a name which later becomes a PDO or PGI, the enterprise has a period of 5 years to continue to use the name providing that clear indications as to the country of origin is made on the product and then is discontinued after the allowed period. Finally, a PDO or PGI may be refused its registration in the rare circumstances where a trademark has been in use and has created a strong reputation and therefore the discontinuance of it and the registration of the PDO or PGI would confuse consumers as to the true identity of the product. Brief note on benefit sharing mechanism to farmers / communities (state amount / percentage / process of payment) In the Act no such arrangements are available. Website for public search of GI registrations and for requesting copies of GI Office records http://ec.europa.eu/agriculture/quality/database/index_en.htm DOOR: includes product names registered as PDO, PGI or TSG as well as names for which registration has been applied. E-BACCHUS: includes geographical indications protected in the European Community for wines originating in Member States and third countries. Source for printed or electronic journals published by the GI Authority -- Any other additional information --

http://ec.europa.eu/agriculture/quality/database/index_en.htm

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Trademark

In the European Union trademark law is regulated both on a national level by each individual EU Member State, and parallel on a EU level by a single registration system within the European Union, called Community Trade Mark (“CTM”). However, the CTM system does not replace the national trademark registration systems and thus the CTM system and the national systems continue to operate in parallel to each other. The Office of Harmonization of Internal Market (OHIM) is the body managing CTMs within the EU and is based in Alicante, Spain. The UK Intellectual Property Office is the body which regulates and manages trademarks in the United Kingdom. Therefore in this section for sake of completeness we will provide information on the CTM system and on the system of a specific EU Member State as an example, namely the United Kingdom, even if the reader will notice that the conditions are the same. Basic information on acquisition of TM rights Does your country have Trademark legislation in place [if not, please indicate its status, e.g. Bill under process] Yes both the EU and individual EU Member States have a Trademark legislation in place. CTM Council Regulation (EC) 207/2009 of 26 November 2009 establishing the community trade mark requirements and procedures for protection. United Kingdom Trade Mark Act 1994 (TMA 1994). Title of legislation, year and major amendments in your country CTM Council Regulation (EC) 207/2009 of 26 November 2009 establishing the community trade mark requirements and procedures for protection. United Kingdom Trade Mark Act 1994. State whether your country is a member of Madrid System for the International Registration of Marks Yes- both the European Community and all EU Member States, including the United Kingdom, are party to the Madrid Union. State whether your TM legislation allows registration of goods or services or both as Trademarks Yes. Registration of both goods and services is allowed both in the CTM system and the trade mark law of the United Kingdom.


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Any essential requirement for foreigner/foreign organization to get protection in your country, e.g. presence of local agents/representatives Principal place of business in any EU Member State or address for service in an EU Member State. Website to access legislation (indicate Internet link) CTM http://oami.europa.eu/ows/rw/pages/index.en.do United Kingdom http://www.opsi.gov.uk/acts/acts1994/Ukpga_19940026_en_1.htm Registration formalities Protection criteria CTM Art. 4 Regulation 207/2009: “any signs capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, the shape of goods or of their packaging, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings”. Art. 1 TMA 1994: “any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings. What can be registered CTM Art. 4 Regulation 207/2009: any words, including personal names, designs, letters, numerals, the shape of goods or of their packaging. TMA 1994 Article 1 TMA 1994: “any words (including personal names), designs, letters, numerals or the shape of goods or their packaging. What cannot be registered Both Regulation 207/2009 and the TMA 1994 distinguish between absolute grounds (which can never be subject to exceptions) and relative grounds (which can be evaluated against other considerations, mainly whether the average consumer would be confused and thus damaged). CTM Absolute Grounds:

(a) signs which do not conform to the requirements of Article 4; (b) trademarks which are devoid of any distinctive character; (c) trademarks which consist exclusively of signs or indications which may serve, in trade, to

designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service;

(d) trademarks which consist exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade;

(e) signs which consist exclusively of the shape resulting from the nature of the goods, or necessary to obtain a technical result, or which give the good substantial value;

(f) signs or words which are against public policy or principles of morality;

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(g) signs or words which deceive the public as to the nature, quality or origin of the product origin of the goods or service;

(h) trademarks which include badges, emblems or escutcheons other than those covered by Article 6ter of the Paris Convention and which are of particular public interest, unless the consent of the competent authority to their registration has been given;

(i) trademarks for wines which contain or consist of a geographical indication identifying wines or for spirits which contain or consist of a geographical indication identifying spirits with respect to such wines or spirits not having that origin;

(j) trademarks which contain or consist of a designation of origin or a geographical indication registered in accordance with Council Regulation (EC) No 510/2006 of 20 March 2006 on the protection of geographical indications and designations of origin for agricultural products and foodstuffs.

Relative Grounds:

(a) trade mark which is identical to an earlier trade mark and used for identical goods or services for which registration is applied;

(b) trade mark is identical and used for similar goods or services, or the trade mark is similar but used for identical goods and service and is likely to cause confusion in customers;

(c) identical trademark for not similar goods and services but which would take unfair advantage or damage the reputation of the business using the registered trademark.

TMA 1994 Absolute grounds:

(a) signs which do not satisfy the requirements of Article 1 above;

(b) trademarks which are devoid of any distinctive character;

(c) trademarks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services, or other characteristics of goods or services;

(d) trademarks which consist exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade provided that a trade mark shall not be refused registration by virtue of paragraph (b), (c) or (d) above if, before the date of application for registration, it has in fact acquired a distinctive character as a result of the use made of it;

(e) the sign shall not be registered as a trade mark if it consists exclusively of the shape which results from the nature of the goods themselves, necessary to obtain a technical result, or the shape which gives substantial value to the goods.

Also a trademark shall not be registered if it is:

(a) contrary to public policy or to accepted principles of morality, or

(b) of such a nature as to deceive the public (for instance as to the nature, quality or geographical origin of the goods or service).

Moreover a trade mark shall not be registered if or to the extent that its use is prohibited in the United Kingdom by any enactment or rule of law or by any provision of Community law.

Further a trade mark shall not be registered if or to the extent that the application is made in bad faith.

Finally emblems or words which are like the Royal arms, the Royal flag or which make consumers think the goods or services are related to the Royal family are not allowed.

Relative grounds

(a) The trade mark is identical with an earlier trade mark and the goods or services for which the trade mark is applied for are identical with the goods or services for which the earlier trade mark is protected.

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(b) The trade mark is identical with an earlier trade mark and the goods or services are not identical but similar enough to create confusion to the consumers, or if the previous trademark has a reputation in the United Kingdom and the use of such trademark would take unfair advantage or would be detrimental.

Forms required to fill and submit CTM A CTM can be applied by filling the form that can be found on this website: http://oami.europa.eu/pdf/forms/application_ctm_en.pdf which can be sent to OHIM by email, fax or mail. If it is sent by email it is cheaper as there is a reduction of €150 on the basic fee for an individual and the applicant can receive an immediate confirmation of the official receipt. United Kingdom A trademark within the United Kingdom can be applied by filling Form TM3 which can be sent to the UKIP Office either by post or by email which is quicker and credit card can be used a method of payment. Any special provisions/formalities CTM The basic application fee must be paid within one month of the date of submission of the application in order to obtain the receipt date as the filing date. OHIM will not issue a request for payment. Also the applicant must provide the following information:

(a) languages to be used for the trademark description; (b) applicant’s details; (c) description of the mark and any graphic description; (d) identification of the classes of goods or services the trademark will apply to; (e) details of the representative of the applicant.

United Kingdom

The applicant must provide the following information:

(a) Details of the applicant (b) Description of the mark including any graphic representation (c) Identification of the classes of goods or services (d) Details of the representative of the applicant.

Duration of protection (years) CTM Ten years initially but continue indefinitely with renewal every year. United Kingdom Ten years initially but continue indefinitely with renewal on the 10th anniversary of the registration. Registry Office contact details (Mailing address, phone, website, email, etc.) CTM Office for Harmonization in the Internal Market (Trade Marks and Designs) Avenida de Europa, 4, E-03008 Alicante, SPAIN United Kingdom Intellectual Property Office Concept House, Cardiff Road, Newport, South Wales NP10 8QQ, United Kingdom

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State whether online submission is permitted, if so, indicate website CTM http://oami.europa.eu/pdf/forms/application_ctm_en.pdf United Kingdom http://www.ipo.gov.uk Cost (approx.) CTM

UK TM

in local currency (€)

in local currency (£)

(a) Application 1050 (paper) 950 (e-filing) 1800 (collective mark)

200 50 (each class)

(b) Registration

850 (up to 3 classes) 150 (class fee) 1800 (collective mark)

100 (statement of grounds of a decision )

(c) Maintenance (renewal) 1500 (up to 3 classes) 1350 (e-renewal) 400 (class fee) 3000 (collective mark) 800 (exceeding class for collective mark)

200 50 (each class)

(d) Others, if any Madrid Protocol Registration 870

200 (revocation) 20 (request for information) 100 (amend regulations)

Deposit requirements, if any Nil Length of processing and release of Certificate (approx.), e.g. length of publication, examination, etc. CTM: if no oppositions are filed it can take between 12 and 18 months. UKTM: if no oppositions are filed, it takes around 6 months Rights conferred by the Act Major rights conferred to TM owners Both in CTM and UKTM the proprietor has the exclusive rights in relation to good/service to use the trademark, license or assign it. There is no action of infringement of unregistered trademark but only under passing-off. Other information Date of priority and requirements CTM: the number of application is used to claim priority. UKTM: the date the of the international priority claim. Renewal process / procedure CTM: within 6 months before the expiry date.

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UKTM: within 6 months from before the 10th anniversary of the registration of the mark. Opposition formalities CTM: within 3 months from the date of publication on the OJ, an opposition notice can be filed; there is then a period of cooling-off from the date of the opposition for a period of 2 months which can be extended by 22 months; after the cooling-off period the opposition must filed evidence in support of opposition within 2 months; the applicant is given a period of 2 months to respond; a decision is then made by three member opposition division; the opposition has the right to appeal in case the division decides against the evidence presented by the opposition. UKTM: within 2 months from the date of publication, an opposition notice can be filed; defense will be filed and interlocutory hearing will be held; the mark will be reviewed and a decision will be taken. If defense is not filed, the mark will be withdrawn. Any relationship with other legislations in your country Copyright: this intend to protect an original literary, artistic and other creative work which may overlap with the work covered by trademark. However, the advantage of a trademark is that, subject to renewal, it can continue to apply forever while copyright expires within 70 years from the death of the artist. Geographical Indications: a trademark will not be registered if it contains a word which is identical or confusing with the name of the place of origin of the product or foodstuff protected as Protected Denomination of Origin or Protected Geographical Indication. What constitutes infringement of a registered trademark

Both for CTM and UKTM it is infringement of the trademark if a third party uses the registered trademark without authorization for the same goods or services, or uses the same mark for similar goods or services or uses similar mark for identical goods or services and there is likelihood of confusion. It is also infringement if an identical mark is used in the course of trade and is used for goods or services which are not similar but the use of the registered trademark take unfair advantage of, or is detrimental to the distinctive character or the reputation of the trademark.

Website for public search of TMs and for requesting copies of TM Office records CTM: searches on existing CTM can be made using this website: http://www.tmview.europa.eu/tmview/welcome.html; subject to certain limitations, any third party can apply for file inspection; the request must be made in writing and a fee must be paid, the minimum of which is €10 UKTM: searches can be made using this website: http://www.ipo.gov.uk/tm/t-find/t-find-text/; request for a certified copy can be made filing Form TM31R Source for printed or electronic journals published by the TM Registry Office CTM: Official Journal - http://eur-lex.europa.eu/JOIndex.do UKTM: IPJournal http://www.ipo.gov.uk/types/tm/t-os/t-tmj/journals/6811/domestic/t-tmj-domestic-6811.html Any other additional information --

http://www.tmview.europa.eu/tmview/welcome.html

http://www.ipo.gov.uk/tm/t-find/t-find-text/

http://eur-lex.europa.eu/JOIndex.do

http://www.ipo.gov.uk/types/tm/t-os/t-tmj/journals/6811/domestic/t-tmj-domestic-6811.html

http://www.ipo.gov.uk/types/tm/t-os/t-tmj/journals/6811/domestic/t-tmj-domestic-6811.html

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Annex-III: Authors’ Details

Authors Name and Address Chapter contributed

Ms Rita Afiavi Agboh-Noameshie Intellectual Property Focal Point Africa Rice Center (WARDA) 01 B.P. 2031 Cotonou, Benin Tel:+ 229 21 350188 Mobile:+ 229 93145548 Fax:+ 229 21 35 0556 Email: [email protected]

Chapter-1: IP systems in Benin

Mrs Solange DAO/SANON Bureau Burkinabé du Droit d'Auteur (BBDA) 01 BP 3926 Ouagadougou 01 Burkina Faso Tel: +226 50 30 22 23 Email: [email protected]

Chapter-2: IP systems in Burkina Faso

Ms Lu Xin Examiner for Plant Variety Protection Division for Plant Variety Protection Development Center for Science and technology, Ministry of Agriculture, P.R.China Building 18, Mai Zi Dian Street, Chaoyang District, Beijing 100125, P.R.China Telephone: 86-10-65926315 Fax: 86-10-65923176 Email: [email protected]

Chapter-3: IP systems in China

Ms Silvia Salazar Legal Analyst PROINNOVA, Vice Presidency for Research University of Costa Rica, San Pedro de Montes de ocas 2060 Tel: (506) 2511 58 35 /22 44 25 07/22 44 32 40 Mobile: (506) 83 84 84 08 /88 36 74 42 Fax: (506) 22 44 24 27 / 22 83 42 26 Email: [email protected]

Chapter-4: IP systems in Costa Rica

Dr. Sudhir Kumar Soam Principal Scientist National Academy of Agricultural Research Management (NAARM) Rajendranagar, Hyderabad – 500 407, India Telefax (office) – 0091-40-24581348 Phone (Residence) –00 91-40-24013409 Fax: 0091-40-24015912 Email:[email protected] [email protected]

Chapter-5: IP systems in India

Mr B Hanumanth Rao Lead Administrative Officer, IP Office ICRISAT, Patancheru A.P. 502 324, Andhra, Pradesh, India Tel: 00 91 40 30713326 Fax:00 91 40 30713074 Email: [email protected]

Chapter-5: IP systems in India

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Mr Nugroho Sulistyo Priyono Head of Planning Division Centre for Plantation Forest Research and Development Forestry Research and Development Agency (FORDA), Ministry of Forestry J. Gunung Batu 5, Bogor, Indonesia Tel: 62 251 8631238 Mobile: 08122976384 Email: [email protected]

Chapter-6: IP systems in Indonesia

Mr Antony Mbayaki Technology Transfer Manager Moi University, P. O. Box 7256, Eldoret, Kenya Tel: + 254 53 4335/ Mobile: + 254 733 564260 Fax: + 254 534335/532030215 Email:[email protected]

Chapter-7: IP systems in Kenya

Ms Rafeah A. Rahman Deputy Director, Corporate Affairs Division Malaysian Agricultural Research & Development Institute (MARDI) G.P.O. Box 12301 50774 Kuala Lumpur, Malaysia. Tel:+ 60 3 89437570/ Mobile : +6016 356 4745 Fax: +603 89416642 Email:[email protected]

Chapter-8: IP systems in Malaysia

Mr Christopher Udeonwe Orji Principal Scientific Officer (PSO)/Assistant IP Desk Officer Agricultural Biotechnology and Bioresources Department National Biotechnology Development Agency (NABDA),16, Dumakofia Str, Area 11 Garki, Abuja, Nigeria Mobile: + 234 – 8036789386/ Fax: + 2345472 Email: [email protected]

Chapter-9: IP systems in Nigeria

Mr Victor Ibigbami Director Agricultural Biotechnology and Bioresources Department National Biotechnology Development Agency (NABDA),16, Dunukofia Strt. Area 11, Garki, Abuja, Nigeria Tel:09-6715691/3145473 Mobile: + 234 8061560608 Fax: 09-3145472 Email: [email protected]

Chapter-9: IP systems in Nigeria

Ms Pamela Ferro C. ESTUDIO GRAU Av. Santa Maria 110 – Miraflores Lima 18, Peru Tel: (511) 422-0830/ Mobile:(511) 999962492 Fax (511) 440-6158 Email: [email protected]

Chapter-10: IP systems in Peru

Mr Ildefonso Jimenez Senior Counsel, Head of the Legal Services Unit International Rice Research Institute (IRRI) DAPO Box 7777, 1301 Metro Manila, Philippines Phone: +63 (2) 580-5600/ Fax: +63 (2) 580-5699 [email protected]

Chapter-11: IP systems in Philippines

303

Mr. Vivencio R. Mamaril Designate-Secretariat Head Plant Variety Protection Office Bureau of Plant Industry Malate, Manila, Phillippines [email protected]

Chapter-11: IP systems in Philippines

Mr Patrick Ngwediagi Registrar of Plant Breeders’ Rights Ministry of Agriculture Food Security and Cooperatives, P.O. Box 9192, Dar Es Salam, Tanzania Tel:+ 255 22 2861404 Fax: + 255 22 2861403 Email:[email protected] [email protected]

Chapter-12: IP systems in Tanzania

Ms Chutima Ratanasatien Plant Variety,Protection Division Department of Agriculture 50 Phaholyothin Road, Chatuchak Bangkok 10900, Thailand Tel: 662-9407214 Mobile: 66-8-2018631/ Fax: 662-5614665 Email:[email protected]

Chapter-13: IP systems in Thailand

Dr. Keith Jones Executive Director, Washington State University Research Foundation 1610 NE Eastgate Blvd Pullman, WA 99163 Tel: 509-335-4363/ Mobile: 509-339-5066 Email: [email protected] Skype: keith1309

Annex-I: IP systems in USA

Ms Isabel Lopez Noriega, Bioversity International (Author: Patent, PVP) e-mail: [email protected] Ms Gabrielle Gagné, Bioversity International (Author: Patent, PVP) e-mail: [email protected] Mr Alejandro Mejias, Bioversity International (Author: Patent, PVP) e-mail: [email protected] Ms Francesca Re Manning, CGIAR CAS-IP, Bioversity Int. (Author: copyright, GI,TM) e-mail: [email protected] Bioversity International Via dei Tre Denari, 472/a 00057 Maccarese Rome, Italy Tel: +39 066118307

Annex-II: IP systems in European Union

For any query please contact: Dr Sudhir K. Soam, Principal Scientist, NAARM, Rajendranagar, Hyderabad-500 407, India. Emails: [email protected] AND [email protected]



About the Editors……….

Dr. Sudhir Kumar Soam, Principal Scientist, NAARM holds the Doctorate in Botany. He has done several national and international research and consultancy projects in the specialization of WTO and IPRs in agriculture and project management. He is globally travelled professional trainer in agricultural research management and also functions as member of policy decision making body of several national and international organizations related to IPRs and agro-biodiversity.

Mr B Hanumanth Rao, Manager, Intellectual Property, ICRISAT, holds a Masters degree in Business Laws from National Law School of India University, Bangalore, India. He is responsible for the execution of a program of work for implementing the ICRISAT's policy on Intellectual Property under the direction of Deputy Director General—Research. He was instrumental in setting up the IP Office in ICRISAT. Represented ICRISAT in various national and international IPR conferences in India and abroad and has done several international projects on IP management.

Dr. Victoria Henson-Apollonio, Senior Scientist and Manager of CAS-IP since its creation in 2000. Her unique background combines both scientific and academic achievement with real-life IP expertise. She has many years practical experience as a patent agent and as a technology transfer (TT) and patent specialist at the Argonne National Laboratory and as a tenured member of the faculty of the Department of Biology at Purdue University, USA. This overlap of scientific and legal skills makes her exceptionally well placed to offer advice on IP and TT issues in agriculture. A graduate from the University of Florida's College of Agriculture (Major in Animal Science), Victoria holds a PhD in Pathology (College of Medicine; University of Florida) and is a registered U.S. Patent Agent.

draft a snapshot guide to intellectual property systems

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