Global advancements to IP framework and systems
Cambodia
As of October 15, 2024, Cambodia has introduced new enforcement measures in the form of financial penalties in relation to the failure to pay patent annuity fees by the relevant deadline.
The adoption of fiscal penalty measures aims to enforce a greater level of adherence to the patent fee system of Cambodia. As patent rights lapse with the non-payment of annuity fees, it is vital that rights holders pay close attention to any fee deadlines in order to maintain protection for their invention.
As per the new late-payment penalty system, patent rights holders who do not meet the deadline for the payment of annuity fees will have a grace period of 6 months to make said payment. During this period, a penalty of 0.125 USD will be incurred for each day until the payment is made. If payment is not made within the prescribed time limit, patent holders have an additional 6 months to restore the patent by paying a 25 USD fee along with a stipulated daily penalty of 0.125 USD.
The newly implemented penalty fee system allows for a greater level of flexibility in the patent annuity process for rights holders, giving them the opportunity to restore patents that may have been accidentally overlooked. It does, however, remain encouraged that rights holders pay any and all patent fees prior to deadlines despite this new grace-period system, in order to avoid the accumulation of such financial penalties and to mitigate the risk of the invalidation of a patent right.
In addition to being beneficial to current patent holders, these changes also indicate an ongoing effort by Cambodia to align with international standards for intellectual property systems, which, in turn, is hoped to encourage further filings for IP rights within the jurisdiction.
EU
On October 10, 2024, the European Union (EU) Council adopted the EU Design Legislative Reform Package.This package comprises two legislative acts, namely the European Design Directive (“EUDD”) (the Recast Directive on the legal protection of designs), and the European Design Regulation (“EUDR”) (the Amending Regulation on community designs). Combined, these two texts bring about substantial updates to the current design system of the EU, which has been in force for over twenty years.
The new design law is set to implement a multitude of significant changes to the current system, including a move toward an alignment with the protection used within the EU trademark system. As such, and upon the implementation of the new legislative reforms, Community Designs will instead be referred to as “European Union Designs” (“EUDs”), with the Community design courts being renamed as “EU design courts”.
Moreover, registered holders of EU designs will be able to utilize the newly created design registration symbol “â’¹” in order to indicate the authenticity of the product to which the design relates, in a similar vein to the way the ® or © symbols are already in use for trademark and copyright IP rights.
EU design applicants will also be able to file multiple EU design applications for registration comprising designs that fall into various Locarno classes, as opposed to being restricted to file for products of the same class and type. This new freedom is limited to 50 designs per multiple design application.
An amended and more simplified fee regime is also set to enter into force as of May 1, 2025. As per these fee changes, the cost in relation to an application for an EU design will remain at the same rate of 350 EUR; however a uniform reduced fee of 125 EUR will be applied for each additional design in a multi-design application. Despite this impending discount in fees for EU designs, the cost of renewal is set to increase significantly, particularly in relation to the 3rd and 4th yearly fees. International design registrations designating the EU, on the contrary, are due to see a substantial drop in renewal fees once the new costs have been implemented.
Another significant change to the design legislation is that whilst the visibility criteria remain obligatory for registration, the design features of a product will not be required to be visible in any particular scenario or timeframe to be protectable by a design right. An exception to the aforementioned non-requirement is that any component parts of a complex product should remain visible during normal use of the product.
Further, the definitions of "Design" and "Product" have been broadened. As such, the term “Design” is set to not only encompass the appearance of either the whole, or part of, a product, but also covers “the movement, transition or any other sort of animation of those features” too. The new definition of the term "Product" will describe any industrial or handicraft product inclusive of either physical forms of design, or digital forms, such as virtual designs in the metaverse, and will also include graphical user interfaces (GUIs), as well as interior or exterior environments.
Moreover, there has been an extension of the scope of protection for design rights, with design infringement now encompassing 3D printing. The regulations now also clarify that infringement can constitute the downloading, copying, sharing or distribution to other parties via any medium or software that records the design for the purpose of making a product protected by the design. EU design holders will also be entitled to prohibit third parties from transporting products from non-EU countries into the EU, even if they are not intended to be placed on the EU market.
The new legislation is also set to assist EU countries in protecting cultural heritage, with the new directive allowing Member States to implement within national law that a design may be refused registration if it contains any reproduction of elements of cultural heritage that are of national interest, for example, a traditional costume of a region.
The new EUDR provisions are set to enter into force as of May 1, 2025, however any provisions that require implementing secondary legislation will not be applicable until July 1, 2026. Such provisions which are set to enter into force in 2026 include the allowance of new types of designs. The EUDD, on the other hand, will enter into force on 8 December 2024, with EU Member States having three years, until December 9, 2027, in order to transpose the provisions into national law.
The new EU design legislation aims to modernize the framework surrounding the existing industrial design regulations, forming a more efficient system for applicants and rights holders to utilize. Moreover, the introduction of the allowance of different types of designs for registration, including a wider scope expanding into non-physical forms of designs, will allow for the system to further support innovation through new technologies.
Overall, the revisions to the EU design legislative framework are set to strengthen and standardize the existing design regulations across the EU, encouraging designers and businesses to foster further creativity and innovation, and to register their designs for EU protection.
Moldova
October 11, 2024 marked the entry into force of the Geneva Act of the Lisbon Agreement on Appellations of Origin and Geographical Indications in the Republic of Moldova, following the submission of the country’s instrument of ratification to the Agreement on July 11, 2024.
The ratification of the Lisbon Agreement allows Moldovan producers to protect designations of origin (DO) and Geographical Indications (GI) on an international level.
Accession to the Geneva Act affords the opportunity for producers of quality products linked directly to their origin to file a single IP application to the WIPO, accompanied by one set of fees, to obtain protection of designations of their products.
The Republic of Moldova, in turn, commits to reviewing requests for GI and AO protection from Geneva Act member states and ensuring protection of registered designations within its territory, in line with its legal framework and the Geneva Act's requirements.
The accession of Moldova to the Geneva Act of the Lisbon Agreement marks a significant step toward a more global and modernized approach to intellectual property protection within the jurisdiction, aligning the country's IP system with its international counterparts.
UK
The United Kingdom IPO has recently introduced statements of grant for international designs on a permanent basis, following a successful trial period which commenced in February 2024.
Such statements indicating grant of an international design serve as official evidence that an international design registration, filed via the Hague System, has been accepted at the national level.
The Hague System itself allows for applicants to file a single industrial design application (known as an international design application) with the World Intellectual Property Organization (WIPO) covering any, or all, Hague member states, eliminating the need to file individual design applications in each state separately. International applications are assessed and examined by each country independently, and, if granted, will be effective in those jurisdictions in accordance with the national laws of each country. Some IP offices issue a statement of grant of protection (SOG) in order to confirm the grant of the design, such as in the UK.
As a result of the introduction of SOGs in the UK, service users have confirmed that such statements are useful in providing evidence and faster certainty that an international design registration has been accepted, allowing rights holders to enforce their design protection more efficiently.