JAH & Co. IP would like to inform our clients and associates the latest jurisdictional updates in countries of our operation:
Please be advised that the trademark authorities are exploring the mechanism of adopting the registration procedure currently being used in Erbil TMO for Kurdistan. Presently in Kurdistan, when filing a new trademark application it is obligatory to conduct search of the mark as to prior rights and distinctiveness. In case the Trademarks Registrar refuses the application for registration due to the presence of a prior right or non-distinctiveness he will call for the withdrawal of the application and will not accept the payment of the official fees for filing of same. If the search report is clear, the applicant has to file the searched mark and settle all fees to be paid i.e publication and registration within one month time from the date of the search. The intention of the authorities is to reduce the time frame for registration which currently stands at 36-52 months in Iraq (Baghdad).
The Controller General of Patents, Designs and Trademarks has issued an order dated 19 February publishing the revised Guidelines for Computer Related Inventions (CRI). The current guidelines are in line with the provisions of the Patents Act, 1970.
The guidelines published by the patent office on 21 August last year, were widely regarded as limiting developers. After consultation and research, the Patent office issued an order dated 14 December, 2015, keeping the guidelines in abeyance. In other words, the patent office is effectively saying no to all patents that are purely software-based. However, software will continue to be protected by the copyright law, but can’t be patented in India under very specific conditions which have been specified as shown below.
The patent office has accepted its three-part test to determine the patentability of CRIs:
- Openly construe the claim and identify the actual contribution;
- If the contribution lies only in mathematical method, business method or algorithm, deny the claim;
- If the contribution lies in the field of computer programme, check whether it is claimed in conjunction with a novel hardware and proceed to other steps to determine patentability with respect to the invention. The computer programme in itself is never patentable. If the contribution lies solely in the computer programme, deny the claim. If the contribution lies in both the computer programme as well as hardware, proceed to other steps of patentability.
Such a test will ensure that applications for patents in the field of software will be rejected and only genuine applications claiming a novel hardware component along with software will be eligible for patent protection.
The European Patent Validation Law, has been finally approved in this jurisdiction after much deliberation, the said law passed in the legislature will enter into force following issuance of the related implementing regulations which is expected to be published in the coming days. Although Tunisia is not an EPC member state, the Law provides the country a quasi-EPC status with regards to patent procurement, and is expected to encourage more filings and more foreign investment. Validated European patent applications and patents will have the same legal effect as Tunisian national applications and patents or national phase of PCT applications, and will be subject only to Tunisian patent legislations. Moreover, the agreement will facilitate the procedures as such validation will not require further examination in the country.
Please note that, the Moroccan Patent Office signed a similar agreement in December 2010, saw the law voted in December 2014, and entered into force on May 1, 2015.Therefore EU patents can extend protection to the emerging North African economies of Tunisia and Morocco which have recently registered more than 5% of growth.