International Ip Developments

• Citation: Vol. 41 No. 4
• Publication year: 2016
• Author: AURELIA J. SCHULTZ
• topic: Trademark,Patent law,Intellectual Property,Copyright law

International IP Developments

AURELIA J. SCHULTZ

IT HAS BEEN ANOTHER BUSY QUARTER AROUND the world with countries enacting new statutory law covering patents, trademarks, design and traditional knowledge. The Beijing Treaty on Audiovisual works creeps closer to coming into force, and two patent agreements welcomed new members. There are also some rule and procedural changes at the UK patent offices, fee changes in Argentina and an important case on copyright exceptions in India.

RULE, PROCEDURE AND FEE CHANGES AT PATENT OFFICES

The UK amended its Patent Rules (2007) this fall with most of the amendments already in effect and a few more coming in April 2017.¹ Photographs are now accepted in the claims in addition to drawings.² There are new constraints on filing new versions of applications that utilize the earlier version's filing date ("divisional applications"): the new version must be filed more than three months before the original application's compliance date and the original application must not be terminated or withdrawn.³ There is a new rule, 66A, which specifies when international applications may be amended.⁴ Applicants may amend their applications during the national phase of the application, until the first substantive examination report is sent.⁵

Argentina's National Institute of Industrial Property announced an increase in tariffs for patent and utility model registrations, effective in October.⁶ Increases in registration fees are by approximately 20%.⁷

INDONESIA PATENT LAW CRITICIZED AND PRAISED

Indonesia has a new patent law, approved by the legislature in July. The law has been criticized as "downgrading the country's international property system well below international standards."⁸ It has also been praised for "resolv[ing] complications" and "introduc[ing] some patent law principles that are now common in other key patent jurisdictions."⁹ The patent system in Indonesia is only about twenty-five years old and has always been hotly debated.¹⁰ At the time of going to press, the new law was not yet available from the Director General for Intellectual Property, however, there is some information available at this time from those who were able to review the draft bill.¹¹

A few of the widely publicized changes include: Existing patents continue under Patent Law No. 14 of 2001; patents issued after the new law came into effect on August 28, 2016 fall under the new law.¹² Patents require local working in order to remain valid.¹³ Second use pharmaceutical patents are now expressly prohibited.¹⁴ There is a compulsory license for importing or manufacturing pharmaceutical products in certain circumstances.¹⁵ And, grey market parallel importation of pharmaceuticals is allowed.¹⁶

ZAMBIA ENACTS INDUSTRIAL DESIGN LAW

Zambia has new legislation for design patents as well as traditional knowledge, expressions of folklore and genetic resources (see below).¹⁷ Both new laws came into force this past June. The new Industrial Designs Act 2016 converts protection for designs from the copyright protection granted under the 1958 Registered Designs Act to design protection.¹⁸ To be eligible for protection, designs must be new and have individual character.¹⁹ Rights granted to protected industrial designs include reproduction, exploitation, preventing others from making, using or offering for sale, and the right to license.²⁰ There is a two-month opposition period for opposing design applications.²¹ Protection lasts for 5 years from filing, which is a change from the five years from registration date under the 1958 Act.²² Any non-Zambians wishing to register industrial designs must use a registered patent agent.²³

UK ARTISTIC DESIGNS NO LONGER TREATED DIFFERENTLY UNDER COPYRIGHT LAW

The United Kingdom repealed Section 52 of the Copyright, Designs and Patents Act of 1988 this past July.²⁴ Section 52 had created an exception on the term of protection for artistic designs that were incorporated into mass-produced products; they lost their copyright protection after 25 years, vastly shorter than the standard copyright term in the UK.²⁵ The statutory change does reinstate expired copyrights that would have been in effect but-for Section 52, and it comes with a short transitionary window during which existing copies of previously public domain works can be traded without infringing.²⁶ This window ends on January 28, 2017.²⁷

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MEXICO'S TRADEMARK OPPOSITION PROCEEDINGS NOW IN EFFECT

The trademark opposition proceedings in Mexico mentioned in the Spring issue of this publication are now fully in effect.²⁸ The Industrial Property Law has been amended to specify that oppositions may be filed within one month of the mark's publication in the Gazette.²⁹ Submitted oppositions will be considered during the substantive examination of the application.³⁰

NEW TRADITIONAL KNOWLEDGE, GENETIC RESOURCES AND EXPRESSION OF FOLKLORE LAWS IN ZAMBIA, AUSTRALIA AND KENYA

The Protection of Traditional Knowledge, Genetic Resources and Expressions of Folklore Act, 2016 (Act No. 16 of 2016) introduces protection within Zambia for these three categories.³¹ The law essentially applies to anyone who is not a member of a traditional Zambian community.³² Those wishing to explore, access or use traditional knowledge, genetic resources or expressions of folklore from within Zambia must obtain approval from the Patents and Companies Registration Agency. Accessing or exploring genetic resources requires an access or exploration permit, as well as a signed agreement with the community holding the relevant resources.³³ An agreement signed with the community must be approved by the Agency.³⁴ All permits, licenses and other agreements will be kept on record in a Register of Traditional Knowledge, Genetic Resources and Expressions of Folklore.³⁵

Kenya's Traditional Knowledge and Cultural Expressions Act 2016 came into force this past September.³⁶ The Kenyan Act provides for county-level and national-level registration, but like the Zambian Act, registration is not a requirement of protection.³⁷ Traditional knowledge, cultural expressions and genetic resources cannot be used without explicit permission from the community that holds said material.³⁸ All agreements for "access, authorizations, assignments or licenses" must be in writing.³⁹ The production of commercial derivative works of traditional knowledge or traditional cultural expressions requires a signed written agreement with a benefit-sharing plan.⁴⁰ It is the duty of the owners of the material, not the user, to notify the Cabinet Secretary responsible for intellectual property matters of all agreements.⁴¹ But, users must notify the Cabinet Secretary seeking consent for use and provide copies of any signed user agreements.⁴² Offenses include having in possession in the course of trade, manufacturing, selling, exhibiting for trade, importing or trans-shipping through Kenya, and developing derivative goods, all without permission, as well as violations of the moral rights of attribution and integrity.⁴³ Potential criminal penalties include up to 5 years in prison and fines up to approximately US$10,000.⁴⁴ Holders of traditional knowledge or traditional cultural expressions may also bring civil claims for damages, injunctions, accounts of profits and apologies.⁴⁵ There is a 12-month transition period in which to reach agreements for continued use of traditional knowledge or traditional cultural expression already occurring.⁴⁶

The Australian state of Victoria, which includes the city of Melbourne, has also enacted similar laws.⁴⁷ The Aboriginal Heritage Act 2006 already provided for protection of physical heritage of Aboriginal people, such as human remains and sacred objects.⁴⁸ The new amendments add protection for intangible heritage, which includes traditional knowledge and cultural expressions.⁴⁹ Like physical Aboriginal heritage, intangible Aboriginal heritage may be registered with the Secretary of the Department for Victorian Communities.⁵⁰ Under the Aboriginal Heritage Act, people may apply for cultural heritage permits to conduct research or trade in Aboriginal objects.⁵¹ These permits are not allowed for intangible heritage.⁵² However, people may work out arrangements for access and use of registered intangible Aboriginal heritage with the owners directly.⁵³ Agreements must be in writing and registered with the Secretary.⁵⁴ Unauthorized commercial use can result in financial penalties, which can be up to nearly US$1.4 million for knowing use by a corporation.⁵⁵ There are also financial penalties for acting outside the scope of agreements.⁵⁶

LIBERIA IP LAW INTENDED TO BRING LIBERIA INTO WTO/TRIPS COMPLIANCE57

Liberia introduced new patent, copyright and trademark laws in its new Liberia Intellectual Property Act 2014 that was approved by the legislature in July of 2016. The new law is part of Liberia's accession to the World Trade Organization.⁵⁸ At the time of writing, it appeared to still be awaiting the president's signature.⁵⁹ When that happens, the law will repeal the 1997 copyright law and 2003 industrial property act.⁶⁰

The Intellectual Property Office is reconstituted as the Liberian Intellectual Property Office (LIPO).⁶¹ The treaty concepts of national treatment and most favorite nation treatment are explicitly enshrined in the new act.⁶² The U.S. and Liberia were already members of several IP treaties with these requirements, so Americans should already have been receiving the same treatment as Liberians in the various IP areas.⁶³

Copyright Updates

Computer programs and architectural works are now listed in the subject matter of copyright.⁶⁴ Protection for performers in audio-visual works is introduced, as well as protection of rights management information (copyright management information under US law).⁶⁵ The term of protection stays the same for copyright at life plus 50 years.⁶⁶

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Trademark Updates

The new act is more explicit about actions that are covered under use of the mark...