Venezuela: Recommended to pay official fees for trademark in good time before the due date

In Venezuela, as a consequence of the Partial Reform of the Stamp Duties Act (Article 6 of Decree No. 1398) in 2015, there has been a significant increase in the official fees for procedures for registered rights.

The Reform has also complicated the handling of payment of fees for registration, renewal and recordals of changes of ownership, changes of address and licences in the area of trademarks.

Experience has shown us that in Venezuela steps must be taken as far in advance of the due date as possible, given that payments of fees must be transferred to the account of the Autonomous Intellectual Property Service (SAPI) and once the transfer has been completed, the transfer receipt must be officially stamped. It is not uncommon to encounter extraordinary bureaucratic obstacles, which lead to delays.

Furthermore, the U.S. Government recently imposed economic sanctions on Venezuela, which also have an impact in the field of trademarks. The Office of Foreign Assets Control (OFAC) is monitoring transactions made in dollars to accounts in Venezuela, which can lead to considerable delays in the completion of payments. These obstacles can have significant consequences for trademark rights. If we consider, for example, the renewal procedure, in relation to which there are no provisions under Venezuelan legislation for a grace period beyond the expiry date, the payment of the official fee (which for one trademark in a single class currently amounts to 3.000 USD) must be duly confirmed by the SAPI prior to the expiry date of the trademark, otherwise it will be declared abandoned.

It is therefore advisable to keep in mind that in Venezuela, with respect to those procedures requiring payment of a fee affected by Article 6 of Decree No. 1398, it is necessary to act well in advance of the deadline.

Author: Cristina Arroyo

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Trademarks in Spain: a step by step by guide

ELZABURU partners Luis Baz and Fernando Ilardia offer a complete and easy to follow guide about trademark registration in Spain: how to apply for your trademark, refusals, oppositions and so on

Spanish chapter

Reproduced with permission from Global Legal Group (published in May 2017)

The new Patent Act (III) – The importance of professional advice

The new Patent Act, Act No. 24/2015, set to take effect on 1 April 2017, provides for far-reaching changes in the procedure for obtaining patents of invention in Spain in the future but at the same time ushers in new demands as well.

Earlier blog entries have dealt with the patentability requirements and the mandatory examination for all new applications filed after the new Patent Act and its Implementing Regulations have come into force. This means that applicants who up to now have made use of the general procedure for grant and hence are not used to replying to communications from the Spanish Patent Office raising objections to the patentability of their applications can expect to encounter new stumbling blocks to overcome during patent prosecution. Here are just a few examples of some of the substantive changes:

  

• To begin with, Examiners will now be able to object that lack of clarity of the claims prevents him or her from carrying out a meaningful search of the prior art.

• Further, applicants will need to bear in mind that the patentability of an invention can be vitiated by European patent applications designating Spain and published in Spanish and by PCT applications that have entered the national phase in Spain and were filed before the priority date of the application even if only published afterwards. Should this situation arise, it will bear on the novelty requirement but not on the inventive step requirement.

• In addition, where an invention relates to either biological material, either animal or vegetable, the new Act requires the application to disclose the geographical origin or source, though that information will not prejudice the validity of the patent. 

• The new Patent Act will also expressly define substances and compositions "for use as medicines" as patentable, something not contemplated under the Patent Act (Act No. 11/1986) currently in force. 

• In an important new development regarding utility models, the novelty requirement will change from local (Spain only) to absolute (worldwide) novelty. In addition, utility models will be able to be used to protect not only mechanical devices but also chemical, though not pharmaceutical, substances and compositions.

• And finally, the patentability requirements (novelty, inventive step, and industrial applicability) and how they are assessed by the SPTO will be new concerns for some applicants with a view to responding convincingly and appropriately to objections by Examiners and thus avoiding additional objections – for instance, on grounds of lack of clarity.

What is more, the changes being implemented by the Patent Act address not just substantive matters but also a number of other significant aspects of patent prosecution. To mention only a few of the most important: 

• The new Act stipulates that the fee for the Report on the State of the Art (search report) will have to be paid along with the filing fee. 

• Applicants will have three months from publication of the search report to request the substantive examination. Absent a timely request for examination, or if the request is withdrawn, the application too will be deemed to have been abandoned. When requesting the examination, an applicant may, at the same time, respond to any objections raised in the SPTO's Examiner's written opinion issued with the search report. 

• There will no longer be only one chance to overcome any deficiencies noted by the Examiner before the reasoned opinion, and Examiners will have to allow applicants additional opportunities to amend the application and submit new arguments under a procedure to be specified in the Implementing Regulations. All amendments will have to include an explanation as to why they make a difference, and support for the amendments in the application as originally filed will have to be shown. If there is no response to the Examiner's communications, or if the applicant is unable to overcome the objections, the application will be refused. 

• Third-party opposition proceedings will now take place after grant, within six months of the date of grant, instead of prior to grant as provided under the current Act. There will be new administrative procedures to enable applicants to voluntarily limit and surrender patents, where appropriate.

So it is that upon entry into force of the new Patent Act, applicants seeking patents of invention in Spain will encounter a completely new scenario, with many substantive and procedural changes. This highlights the need for top professional assistance with a view to optimizing your industrial property assets by minimizing the stumbling blocks that can be anticipated during patent prosecution.

Blog entries dealing with the new Patent Act:

I. A new Patent Act … In two years'time? (Antonio Castán)

II. 180º turn in Spain's system of granting patents  (Francisco J. Sáez)

III. The importance of professional advice (Francisco J. Sáez)
IV. Lawsuits under the new Patent Act (Antonio Castán)
V. Utility models under the new Patent Act (Pedro Saturio)

Author: Francisco Javier Sáez

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180º turn in Spain's system of granting patents (II)

The different stages in the prosecution of Spanish patent applications have up to now started with an initial examination as to certain formal aspects along with certain technical features and clarity of the invention as claimed, followed by a search of the potentially anticipatory prior art preceding the filing date of the application, which is carried out by the Spanish Patent Examiner.

Spain's current Patent Act already prescribes that to be patentable an invention should be new and inventive (i.e., non-obvious) over all the prior art available up to the application's priority date.

This prior art search, called, in English translation, the "report on the state of the art", encompasses all documents disclosed by the Spanish Examiner which, in his or her opinion, could pose an obstacle to the patentability of the invention as claimed, either by reason of lack of novelty or because the invention is obvious in view of the prior art.

Paradoxically, however, as things currently stand, unless the applicant specifically requests the Patent Office to carry out an optional patentability examination, the application will automatically proceed to grant even if the Spanish Examiner has misgivings about an invention's patentability or, indeed, directly finds the invention to be unpatentable.

The resulting patent will, of course, be at risk of possible nullity proceedings in the Spanish courts at the request of any interested third party, and if the court agrees with the Examiner's opinion, the patent will most likely be ruled to be null and void, i.e., never to have had effect at all. This entails costs for the applicant, for third parties, and for society as a whole, and this situation could be mitigated if patents were granted only if they successfully passed a substantive patentability examination by the Spanish Patent Office, currently only optional.

Requesting a patentability examination was introduced as an option for Spanish patent applications in the early 2000's in the hope that it would gradually become common for applicants to request examination, particularly where the search report had been negative, in an endeavour to persuade the Examiner to reconsider the initially adverse opinion. Things have not, however, gone as intended, and today the patentability examination is requested for fewer than 10 % of patent applications, even where the search report is unambiguously unfavourable. This means that the validity of more than 90 % of the patents currently in force is potentially suspect.

A new Patent Act … In two years' time? (I)

Publication this summer of the new Patent Act, Act no. 24/2015 (in Spanish) of 24 July 2015, in the Official State Gazette (BOE) has resulted in the appearance of a flurry of urgent commentary and reviews in a wide range of different media outlets. This reaction comes as a bit of a surprise: while all law reform is newsworthy, what we have in this case is an Act that will not come into force until … 1 April 2017!!

This unusually protracted vacatio legis (22 months) highlights the far-reaching scope of the revision while at the same time likewise attesting to prudence on the part of lawmakers.

Not only will industry need some time to adapt, because certain changes (e.g., the change-over to a single system for grant involving the preliminary examination of all patent applications) will require major adjustments to current thinking and practice, but implementing the changes will require the Administration to undertake its own re-organization, with no room for improvisation.

For once the government is to be commended for not rushing headlong to put a law on the statute books when enforcement will hinge on a particularly arduous process of setting up the requisite implementing regulations. The painful examples of other, premature reform attempts (copyright, for instance?) are still with us.

The delay, amply justified as it is for the broad sweep of administrative adjustments needed by the Patent Office, is more vexing when it comes to other areas. As it evolved, the new Patent Act came to contain more and more changes bearing on legal proceedings and procedure. In the end, unexpectedly, the Act ushers in a whole aggiornamento addressing patent litigation proceedings (with collateral effects extending to other types of industrial property), so it will be bound to resonate. It is indeed unfortunate that we will be kept on tenterhooks for so long awaiting the tantalizing prospects for legal proceedings that the Act holds out to us.

ELZABURU will be reviewing and assessing the new Act in a series of posts that will be appearing on our blog in the coming weeks for our clients, colleagues, and friends. Until then, we can look forward with expectation to this new Act, that will be so long in coming, like a long-awaited dish of a favourite food.

Blog entries dealing with the new Patent Act:

I. A new Patent Act … In two years' time? (Antonio Castán)

II. 180º turn in Spain's system of granting patents  (Francisco J. Sáez)

III. The importance of professional advice (Francisco J. Sáez)

IV. Lawsuits under the new Patent Act (Antonio Castán)
V. Utility models under the new Patent Act (Pedro Saturio)

Author: Antonio Castán

Visit our website: http://www.elzaburu.es/en

European Patent Office revises its Guidelines for Examination

The European Patent Office (EPO) has released a 2014 edition of its Guidelines for Examination. Although the Guidelines are not legally binding, they are the official text on proper application of the European Patent Convention (EPC) and its Implementing Regulations. This latest edition of the Guidelines took effect on 1 November 2014.

European Patent Office

What has changed?

Some of the most important amendments to the Guidelines are, as might be expected, reflections of the latest changes to the Rules regulating time limits for submitting new divisional applications and the availability of additional searches for international applications facing objections on grounds of lack of unity of invention.

Other changes address the admissibility of claims relating to second or further medical uses of known pharmaceutical products, the relationship between method claims and the rule of one claim per category, as well as revision of the principles concerning multiple applications referring to the same invention by the same applicant.

However, what appears to be the most significant change refers to the question of added subject matter. Pursuant to Article 123 (2) EPC, a European patent application or European patent may not be amended such that it contains subject matter extending beyond the content of the application as filed.

Under the EPO's current interpretation, the effect of this provision is for amendments to be deemed admissible only when their wording can be directly and unambiguously derived from the subject matter of the application as filed. The Board of Appeal has sought to maintain that this should not be taken to mean that literal support for the amendment in the original application is required, yet even so objections that amendments submitted by applicants add subject matter simply because they lack a strictly literal – that is, word for word – basis in the application as initially filed are not unusual.

The new paragraph included as H-IV 2.3 of the Guidelines states as follows:

“When assessing the conformity of the amended claims to the requirements of Art. 123(2), the focus should be placed on what is really disclosed to the skilled person by the documents as filed as directed to a technical audience. In particular, the examiner should avoid disproportionally focusing on the structure of the claims as filed to the detriment of the subject-matter that the skilled person would directly and unambiguously derive from the application as a whole.”

Accordingly, this new paragraph may be taken to indicate that the subject matter no longer corresponds strictly to the literal wording used in the application but more freely to what a person skilled in the art understands by those words viewed as a whole. However, though many are hoping that this signifies an end to objections based on the absence of literal support for amendments, the fact is that the paragraph in question does not appear to say anything truly new.

The Guidelines have also added in paragraph H-III 2.1 that the requirement to identify the amendments and indicate their basis "should be understood as an opportunity for the applicant to provide convincing arguments ... as to why the amendment(s) is/are directly and unambiguously derivable from the application as filed. [These arguments] ... are particularly important ... where literal support for the amendment(s) is not present in the application as filed."

This paragraph thus appears to underscore the need to provide detailed arguments with a view to justifying amendments lacking literal support and that, by extension, such amendments would be acceptable.

It remains to be seen whether this update to the Guidelines will actually bring about a change in EPO examiners' interpretation of Art. 123 (2)EPC in practice or whether it will simply turn out to add some nuance to the Office’s current approach, which appears more likely, given that amendments do require literal support in the application as initially filed.

Author: Ruth Sánchez

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Colour marks: New rulings by the CJEU bearing on registrability

On 7 February 2002 Deutscher Sparkassen – und Giroverband eV filed German trademark application no. 30211120, reproduced below. 

The trademark consisted of a colour, red, specifically HKS 13, and it was granted registration on 11 July 2007 for specified financial services for a commercial bank in Class 36.

Contesting the grant of the said mark, Oberbank and Banco Santander applied for a declaration of invalidity. The German court ultimately decided to stay the proceedings and refer three questions to the Court of Justice of the European Union (CJEU) for preliminary rulings, issued in the CJEU's judgment of 19 June 2014 (C-217/13 and C-218/13).

1. By its first question the referring court asked the CJEU what degree of recognition must there be in the trade circles concerned for a trademark to be regarded as having acquired distinctive character. Specifically, it asked whether a consumer survey showing that the mark had achieved a degree of recognition of at least 70 % is required.

The CJEU first pointed out that to determine that distinctive character has been acquired through use, it is necessary to carry out an examination by reference to the actual situation and make an overall assessment of the evidence showing that the trademark is able to identify the goods or services concerned as originating from a particular undertaking. The following, inter alia, may be taken into account for this purpose: market share, intensity of use, geographical scope of use, duration of use, etc. Where the competent authority has particular difficulty in assessing distinctive character, it may order a consumer survey, and it will be for that competent authority to determine what percentage is to be regarded as being sufficiently representative. However, the results of such a consumer survey cannot be the only decisive criterion for assessing distinctive character.

2. The second question was whether in the context of invalidity proceedings it is necessary to examine whether the mark had acquired distinctive character before the date of filing of the application. In the instant case the proprietor had maintained that distinctive character had been acquired before the date of registration but after the date of filing of the application.

The CJEU replied to this question by pointing out that the proprietor needed to have proven that the mark had acquired distinctive character before the date of filing of the application unless national law of the country concerned provided for a later date. This does not preclude the competent authority from taking into account evidence which, though subsequent to the date of filing of the application, enables conclusions to be drawn as to the situation as it was before that date.

3. The third question asked who has to prove that the trademark had acquired distinctive character before the filing date of the application in order to prevent a declaration of invalidity.

The CJEU replied that the burden of proof is to be borne by the proprietor of the mark, not by the applicant for invalidity. Thus, if the proprietor of the trademark fails to show that distinctive character had been acquired before the date of filing, the mark is to be declared invalid.

Author: Marta Rodríguez

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New OHIM criteria on additional evidence submitted late

On 2 June, the OHIM amended the Guidelines relating to opposition proceedings to reflect a change in case law resulting from two Court of Justice judgments delivered in the second half of 2013. The specific sections that have been amended are part C, Sections 1 (procedural matters) and 6 (proof of use). From that date the OHIM began applying the new criteria in all cases in which a decision has not yet been issued.

The judgments in question were that issued on 18 July 2013, in case C-621/11P, «Fishbone» and that issued on 26 September 2013, in case C-610/11P, «Centrotherm», both of which ruled that proof of use submitted after the corresponding term given by the Office to the opponent (i.e. the deadline for submission of proof of use pursuant to rule 22 of the Implementing Regulation) should be considered admissible if certain conditions are met.

The two conditions are:

1. - During the time-limit given to the opponent to submit proof of use, some evidence was submitted and this evidence was to a certain extent relevant.
2. - The opponent is not employing clear delaying tactics to extend the proceedings, or acting with manifest negligence.

Both judgments serve to clarify and substantiate previous judgments delivered by the Court of Justice, such as that of 13 March 2007, OHIM/Kaul (C-29/05 P), which stated that “where OHIM is called upon to give judgment in the context of opposition proceedings, taking such facts or evidence into account is particularly likely to be justified where OHIM considers, first, that the material which has been produced late is, on the face of it, likely to be relevant to the outcome of the opposition brought before it and, second, that the stage of the proceedings at which that late submission takes place and the circumstances surrounding it do not argue against such matters being taken into account” (paragraph 44 of the said judgment).

The OHIM’s discretionary powers to take into account evidence submitted late are extended except in cases in which, as the case law indicates, no relevant evidence is submitted within the time limit, or there is negligence or abusive delaying tactics. Under no circumstances is the OHIM obliged to take into account the said evidence. Rather, it can now exercise its discretionary powers and assess whether the evidence can be considered admissible under these conditions. If the evidence is not accepted due to late filing, the Office must set out the reasons for its decision.

In addition to opposition proceedings, the new practice is also applicable to revocation and invalidation proceedings (in fact, the Centrotherm case was based on an application for revocation).

One aspect that could still be improved is, without a doubt, the need to guarantee the other party’s means of defence, which is an area in which the OHIM does not appear to have yet taken the initiative. In this regard, the Office has simply added the following phrase to point 4.5.1 of the Guidelines: “if necessary, a second round of observations will be granted”.

It is not easy to imagine a proceeding in which one party submits proof after the end of the given term and the other party is not granted the right to submit its observations, having to wait for the OHIM’s decision. It is true that the absence of a right to reply does not mean that the proof is accepted as sufficient (judgment of 7 June 2005, T-303/03, ‘Salvita’, paragraph 79), which is reassuring, but we urge the OHIM to place on record in the Guidelines that a right of reply will indeed be given in the case of proof submitted late. There will be plenty such cases, and the issue appears an important one.

Author: Ramón Cañizares

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Good news for forgetful applicants in Spain

Spanish Patent and Trademark Office
By Ricardo Ricote
(Via Flickr)

Article 33.3 of the Spanish Patent Act is very clear. If you do not request the search report in the 15 months following the patent application, it will be deemed to be withdrawn.

However in a breakthrough decision the Madrid High Court has now ordered the Spanish PTO to resume prosecution of a patent application which protects an innovative test for detecting the presence of certain viruses in the body. The applicant argued that Article 76.3 of the Administrative Procedure Act, which governs all applications to government offices, should prevail as it was passed by Parliament four years after the 1986 Patent Act. The Administrative Procedure Act treats the citizen much more benevolently, allowing him to remedy the defect even though the time limit for doing so has expired. In fact, he can remedy it at any time up to and including the day the public office notifies him of the expiration of the time limit. In the case of the search report, this will be the day on which the withdrawal of the application is published in the Official Gazette of the SPTO. The applicant may request the search report and pay the fee that same day.

This judgment (no. 77/2014 of 29 January 2014 in appeal no. 458/2011) breaks with the practice of the Spanish PTO. It has enormous implications as the same reasoning is applicable to any occasion on which an applicant for a patent, trademark or industrial design fails to comply with a step in the procedure, for instance if he forgets to pay the annuity fee.  

Author:Colm Ahern

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