What's New in Intellectual Property: Recent Legal Updates and International Collaborations
Uruguay
On June 11, 2024, Uruguay's accession to the Patent Cooperation Treaty (PCT) was approved by the Uruguayan Parliament, signifying a poignant milestone for the country in the field of intellectual property. The approval follows the referral of the bill of accession to the PCT to the Uruguayan Parliament in 2023.
Uruguay's accession to the Treaty now means that national inventors will benefit from being able to utilize the PCT system which allows for the protection of patents through a streamlined and uniform route.
The PCT provides for an efficient method for the filing of patent applications in multiple countries simultaneously via a single "international" application. As such, applicants can file an initial patent application with a PCT Receiving Office, and this initial application then serves as a basis for subsequent filings in any of the 157 PCT member states in which the applicant wishes to file. Once granted, a patent filed via the PCT will have the same effect in each designated PCT state as it would had it been filed directly as a national applications in that jurisdiction.
In order to utilize the PCT route for patent protection, applicants should file a single international patent application to a PCT Receiving Office, in one language, alongside a single set of fees, to obtain protection in any of the PCT member states. The PCT route forges an efficient and oftentimes more cost effective solution to filing separate applications in each jurisdiction separately.
Uruguay’s accession to the PCT represents a positive step toward a more international and collaborative approach for the IP system of the country, a move which should encourage an increase in patent filings in the jurisdiction and a subsequent positive impact on the economy and the technological field. The PCT will take effect three months after Uruguay deposits the instrument of accession to the Treaty with WIPO.
Australia
May 17, 2024 saw the implementation of the Intellectual Property Laws Amendment (Regulator Performance) Regulations in Australia, following the introduction of the Intellectual Property Laws Amendment (Regulator Performance) Act.
The new regulations have been enacted in order to further streamline the Australian IP law adopted in 2023, with the aim of refining and improving the country’s intellectual property system. The newly implemented regulations have resulted in various amendments to procedures in relation to trademark filing and maintenance, as well as the removal of transitional patent regulations which are no longer in use.
Among the most poignant alterations is the uniformed alignment of all trademark renewal grace periods, which will now comprise a total of 6 months following the end of a trademark’s 10-year validity term. Prior to the recently enforced regulations, certain registered trademarks were able to benefit from a renewal grace period of up to 10-months following the initial trademark validity term, with the all-encompassing term of 6-months bringing a more streamlined approach.
A further significant update to the trademark protection system is seen in the reforms to the Australian Classification of Goods and Services. The new version of the trademark classification will now reflect the most recent version of class headings for Goods and Services according to the NICE Classification, aligning the country's trademark system with that of internationally accepted standards.
The trademark system has also seen modernisation in the methods in which the Australian IP Office provides trademark information to applicants and stakeholders. As such, the previous method of providing such information via the Official Journal of Trademarks has since been replaced with more user-friendly platforms. These include the official Australian Trademark Search Tool as well as publications available on the IP Office website. Moreover, IP Australia has clarified that certain discontinued TM Headstart requests for trademark applications have the possibility of being revived in certain circumstances.
The new regulations also confirm that trademarks that were previously removed from the register during non-use proceedings may be restored in certain instances.
The amended regulations and subsequent modernisation of the IP system of Australia are hoped to facilitate a more streamlined procedure for trademark protection, benefiting both IP rights holders and potential applicants alike.
Latvia
Latvia recently introduced changes to its IP legislation and procedures, with an amended Patent Law having entered into effect on May 22, 2024 providing clarity amidst the implementation of the Unified Patent Court (UPC) in 2023.
A Unitary Patent (UP) provides protection by way of a single, indivisible right that covers all UPC member states collectively, with litigation in relation to UP rights being uniformly presided over and facilitated by the UPC. Such rights differ from a European Patent (EP), which comprises multiple individual patent rights valid and nationally governed by each designated European jurisdiction respectively.
As per the amended Latvian legislation, a new “safety-net” procedure has been introduced. As such, in instances whereby a registration for a patent application is refused on a UPC level, or an existing UP right is revoked, the patent owner or applicant will be able to utilize a period of 3 months in which they can opt to validate their EP at a national level in the country. The new law also confirms that any disputes or litigation regarding an EP with unitary effect will be initially heard by the Regional Division of the Unified Patent Court for the Nordic-Baltic States.
Clarification has also been provided in relation to deadlines for payment of fees. Whilst the previously enforced patent law did not clearly define the provisions for deadlines for maintenance fees for EP’s, the new legislation states that such fees will be payable upon the filing of the EP application to the Patent Board.
Other altered provisions in the law provide clarity with regard to the storing of information, both in relation to patent applicants and registered patents themselves. Accordingly, once a registered patent has expired, full details regarding the patent itself will be stored in the patent register indefinitely, allowing for continued access to relevant data regardless of whether the patent term has ceased. Further, the details of the inventor of a patent will be published on the Latvian Patent website in order to facilitate transparency of patent rights holders, inclusive of their full name, address and nationality, unless the inventor waived the right to be mentioned.
The enactment of the new IP law in Latvia will undoubtedly allow for applicants and rights holders to benefit from a more cohesive IP system in line with the European region and other UPC member states.
PPH
A new Patent Prosecution Highway (PPH) between the Mexican Institute of Industrial Property (IMPI) and the French Patent and Trademark Office (INPI) was introduced as of June 3, 2024. The signing of the agreement is the 9th PPH entered into by the French INPI since the country entered into its first in 2020.
The newly implemented agreement allows patent applicants to file for patent protection via the PPH route in Mexico and France with either one of the offices (known as the Office of First Filing), with the examination results from the first office being shared with the Office of Second Filing thereafter. This cooperative sharing of patent examination results and data with one another eliminates the need for examination to be undertaken by both offices respectively as the same results can be used to prove patentability for both, resulting in an accelerated method for patent examination.
This, in turn, leads to not only an expedited turn-around time for the processing of patent applications, but increases efficiency, and assists IP offices to increase the quality of the patent granting process.
PPH pilot programs also recently entered into effect between the Uruguayan National Directorate of Industrial Property (DNPI) and the UK Intellectual Property Office (UKIPO), as well as between the Chilean IPO and the European Patent Office, on June 1, 2024.
The introduction of the aforementioned PPH agreements follows an influx of recent worldwide patent-related co-operations this year, with other countries such as Morocco and Saudi Arabia also implementing such collaborative programs.
Laos
May 13, 2024 marked a significant occasion for The Lao People’s Democratic Republic, with the country signing a Validation Agreement with the European Patent Office (EPO). Validation Agreements between the EPO and external countries allow for applicants from countries outside of the European Patent Convention (EPC) jurisdiction to file a single application for EP protection without needing to file national applications in each member state respectively.
The agreement is set to forge a stronger basis for direct foreign investment, as well as for the transfer of trade, innovation and technology between the jurisdictions. This will be facilitated by a more streamlined market accessibility route between Laos, allowing for inventors and institutions to better co-operate on an international scale.
The agreement also allows for the country to benefit from centralized searches conducted by skilled examiners from the EPO, allowing for further legal certainty for applicants from the jurisdiction. In turn, this is hoped to encourage further innovation and economic growth by encouraging applications for IP protection.
Laos marks the second country from Southeast Asia, and the sixth country overall, to enter into a validation agreement with the EPO, following agreements between the EPO and Morocco, Tunisia, Moldova, Cambodia and Georgia. It is not yet announced when the Validation Agreement will enter into force for Laos.