Who can apply for registration of these intellectual property rights and, briefly, what is the procedure for registration?
Registered designs – The legal owner of the rights in the design can file the application with the Registry. If formalities requirements for the application are met, the design should be simultaneously published in the Journal and registered in due course.
Patents – The legal owner of the rights in the invention can file the application. If formalities requirements are met, there will be substantive examination of the application once this has been requested for by the applicant after the publication of the application. Grant of the patent will take place in due course once all requirements have been met.
Plant varieties – The breeder of the plant variety can file the application. If the requirements for the application have been met, the application will be published in the Journal and will be registered in due course unless there are any objections raised by third parties.
Trade marks – The bona fide user or legal owner of the mark can file the application. If formalities requirements of the application are met, substantive examination of the application will take place. Once the application has been approved for registration, it will be published in the Journal and will be registered in due course unless there are any objections raised by third parties.
Registered IPR may be filed by individuals or legal entities, with or without a representative.
Concerning national trademarks (IPC art. L.712-14), patents (IPC art. L.612-23), semiconductors (IPC art. L.622-4) and designs (IPC art. L.512-1), the application for registration is made before the French Office by filling a paper or an online form.
If the protection is also required outside France, the applicant may file an application:
- before the Word Intellectual Property Organization (WIPO) to obtain registered rights on an international basis;
- before the EUIPO or the European Patent Office, to obtain registered rights throughout Europe.
For geographical indications (IPC art. L721-3), the applicant must file a paper application form and send it to the National Institute of Origin and Quality (Institut de National de l’Origine et de la Qualité “INAO”).
For plant varieties certifications (IPC art. L.412-1), the applicant must file a paper application form and send it to the French institution for plant varieties certifications (Instance Nationale des Obtentions Végétales “INOV”).
R: Both individuals and companies may apply for registration of IP rights. The procedure of registration is not exactly the same for all IP rights but there are some “common” steps: i) submission of the application; ii) publication in the IP Bulletin; iii) possible oppositions phase; iv) studies phase; v) decision.
As per Indian patent law, the following persons are entitled to apply for patent:
- Any person claiming to be the true and first inventor of the invention;
- Any person claiming to be the assignee of the person claiming to be the true and first inventor in respect of the right to make such an application
- The legal representative of any deceased person who immediately before his death was entitled to make such an application
The Applicant may file a provisional application followed by a complete specification, filed within a period of one year from the date of filing of the provisional application; or the Applicant may file the application with the complete specification before the Indian Patent Office along with other relevant documents and prescribed fee.
In case of Convention or National phase applications, only complete specification is filed along with other relevant documents and prescribed fee.
An application is automatically published after expiry of 18 months from the filing date.
Examination on an application only commences once a formal request for the same is filed. The Applicant is given a time period of 48 months from the priority date to request for examination which is a non-extendible deadline.
Once the request for examination is filed, the application is examined by the Patent Office and thereafter an examination report is issued. The Applicant is required to meet all the objections raised in the report within 6 months from the date of issuance of the report (extendable upto three months). The Patent Office then examines the response and issues a hearing notice if any objections remain outstanding or else grant the patent in favour of the Applicant.
If a hearing is issued, an applicant is required to appear before the Controller on the said date or he can seek an adjournment in the matter 3 days before the date of hearing. Maximum 2 adjournment can be sought in a matter and one adjournment extends the hearing date by one month.
At the hearing various objections raised in the hearing notice are addressed and a time period of 15 days is given to file a reply to hearing notice.
Once a reply is filed to the hearing notice, the application proceeds for grant or is refused as per the discretion of the Controller.
Any person claiming to be the proprietor of the trade mark can apply for registration, on the basis of prior use, or on a proposed to be used basis.
For getting a mark registered with the Trade Marks Registry in India, the first step is to search the Registry database for any identical or similar mark. However, it is not mandatory procedure for filing of the trademark application.
If it appears that no identical or similar mark is present in the Register, one can apply for registration of the trade mark
Within 6-9 months of filing an application for registration of trade mark, an examination report is issued by the Trade Marks Registry pointing out the objections raised to the registration of trade mark.
A reply to these objections need to filed within 1 month from the receipt of the examination report.
After considering the application if the Registrar is satisfied that the trade mark can be registered, he publishes the trade mark in the Journal. Alternatively, a hearing is fixed in the matter and if the mark is allowed at the hearing, it is published in the Journal. Such hearings (oral proceedings) are very common in the IPO practice.
The trade mark proceeds for registration if no opposition is filed within 4 months from the date when journal was made available to public.
An application for registration can be filed by the author, or rights owner or assignee or legal heir. An author as defined by the Indian Copyright Act means:
- in relation to a literary or dramatic work, the author of the work;
- in relation to a musical work, the composer;
- in relation to an artistic work other that a photograph, the artist;
- in relation to a photograph, the person taking the photograph;
- in relation to a cinematograph or sound sound recording, the producer; and,
- in relation to any literary, dramatic, musical or artistic work which is computer generated, the person who causes the work to be created.
- The application with complete details and copies of the work is to be filed.
- The application is examined and objections, if any, are raised, or any extra documents required are requested.
- A response has to be filed within 30 days; if the response is not filed within the stipulated time, the application is deemed to be abandoned.
- Then the application is re-examined by the Registry; where it is either accepted or rejected.
- Thereafter, on acceptance, a certificate is issued by the copyright office after the objections, if any, are removed to the satisfaction of the Copyright Registry.
Any person claiming to be the proprietor of any new or original design may apply for registration. A proprietor may be from India or from a Convention country.
A proprietor may be:
- An author of design
- A person who has acquired the design
- A person for whom the design has been developed by the author
- A person on whom the design has devolved
An Application with different views of an article such as FRONT, BACK, TOP, BOTTOM, LEFT, RIGHT and PERSPECTIVE is filed at the Designs registry along with an appropriate class.
India is not a signatory to the Locarno Agreement though its classification system is modelled on the Locarno Classification system.
Multiple embodiments of a design or multiple designs in a single application are not allowed. Separate applications for each distinct embodiment or design should be filed simultaneously or, in any event, before expiry of the priority deadline. Figures can be submitted in the form of line drawings, computer graphics or photographs, and should contain no descriptive matter, reference numerals/letters or trademarks. Dotted or discrete lines or any shading in the linedrawings is usually not allowed.
The examination process is substantive. Within 1-2 months of filing an application for registration of design, an examination report is issued by the Designs Registry pointing out the objections raised to the registration of Design.
A design application must be placed in order for acceptance within six months of the filing date. Thus, if the applicant is unable to reply to the examination report within this period, it can file a formal request for an extension (of up to three months) at the Designs Office, along with the prescribed official fees.
Registration and publication:
Once the objections are complied with the design will be registered and a copy of the design will be published in the Patent Office Journal.
Geographical indications (GI):
An association of persons or producers or any organization or authority that represent the interest of producers of the concerned goods, and are expected to file an affidavit indicating how the applicant claims to represent their interest.
The application for registration of GI should contain a statement as to how the GI serves to designate the goods as originating from the concerned territory, in respect of specific quality, reputation or other characteristics of which are due exclusively or essentially to the geographical environment, with its inherent natural and human factors, and the production, processing or preparation of which takes place in such territory, region or locality. It should also include the class of goods to which the geographical indication shall apply, the geographical map of the territory in which the goods originate or are being manufactured, the particulars regarding the appearance of the geographical indication (as to whether it is comprised of words or figurative elements or both) and any statement containing particulars of the producers of the concerned goods.
After the application has been filed, the examiner reviews the application and the accompanying statement of case. Thereafter, the Registrar issues an examination report. Depending on the merits of the application and of any evidence of use, the Registrar may accept or reject the application either absolutely or subject to certain modifications. The Applicant is required to respond to the rejection or objections within two months of the receipt of the examination report failing which the application will be dismissed. After the acceptance of the application by the Registrar, either absolutely or subject to certain conditions and with or without a hearing being conducted, the application will be published.
Any person may, within three months of the publication of the application to register a geographical indication, file an opposition.
The Registrar of Geographical Indications may register the geographical indication after the application has been accepted and not opposed or if opposed the opposition has been decided in favor of the Applicant. Thereafter the Registrar will issue the Registration Certificate in the prescribed format.
Any natural or legal person may file for registration of the IP rights in section A; such person will be the creator, assignee or beneficiary of the right. The registration procedure varies depending on the type of right. In brief:
- Patents: There is no substantive examination of patents application in Greece. An Examiner reviews the application only on formalities and, in case of deficiencies, these must be remedied within 4 months as from the application. As a next stage, the Examiner issues, at the applicant’s choice, either a Search Report or a Reasoned Search Report, which the applicant may comment within 3 months. After such time, or if the applicant waives its right to comment, the patent is granted. The patent, together with the Search Report is published 18 months as from the application.
- Utility models: An Examiner reviews the application only on formalities and, in case of deficiencies, these must be remedied within 4 months as from the application. After such time, the utility model is granted.
- Semi-conductor topographies: An Examiner reviews the application only on formalities and, in case of deficiencies, these must be remedied within 4 months as from the application. After such time, the title is granted.
- Registered designs: An Examiner reviews the application only on formalities and, in case of deficiencies, these must be remedied within 4 months as from the application. After such time, the registered design is granted.
- Plant varieties: An expert committee reviews the application and delivers an opinion to the Minister of Agriculture, who grants the title. However, as already noted, in the absence of the implementing Decree prescribed by the Greek plant varieties law, no national plant varieties grants are available.
- Trade marks: An Examiner reviews the application for absolute and relative grounds of refusal. If the application is accepted, it is advertised on the Greek TM Office's web site, triggering a 3-month opposition deadline. If no opposition is filed or after the final rejection of such opposition, the trade mark is registered.
- Copyright: There is no registration procedure for copyright.
Patents (including utility model rights)
In principle, an inventor, or someone who was assigned the right to obtain a patent from the inventor, can apply for registration. To obtain a patent, an applicant needs to make a request for examination with the JPO within 3 years from the filing date.
A person who conducts, or is planning to conduct, business in connection with the designated goods or services can apply for registration.
A person who creates a design that is industrially applicable, or someone who was assigned the right to obtain a patent from such person, can apply for registration.
Who can apply for registration?
What is the procedure for registration?
Inventor or assignee(s)
Application’s filing; formal examination; first
Who can apply for registration?
What is the procedure for registration?
Any natural person or corporation
Application’s filing; first publication; opposition (if
Appellations of Origin
Mexican Patent and Trademark Office or any person with
Application’s filing; formal and in-depth examination;
Copyright and other rights
Who can apply for registration?
What is the procedure for registration?
Reservation of rights
Any natural person or corporation
Application’s filing; formal and substantive examination;
Inventor or assignee(s)
Application’s filing; formal and in-depth examination,
Domestic and foreign companies and/or individuals can apply to register rights. Applicants should file patent applications to the State Intellectual Property Office (SIPO).
Applications for plant variety rights are filed with the State Forestry Bureau or the Ministry of Agriculture.
Trademark applications should be made to the CTMO.
If a party elects to record their copyright works in China, an application should be made to the China Copyright Office.
Who may apply?
- The first owner in the relevant invention or design, or their successor in title, can apply to register a patent or design.
- The proprietor(s) of a patent can apply for an SPC (it is not required that the marketing authorisation also be in the patent proprietor's name).
- For registered trade marks, the applicant should be the individual or legal entity seeking registration of the mark.
- For plant variety rights, the person entitled to the grant of plant breeders’ rights in respect of a variety is the person who breeds it, or discovers and develops it, or his successor in title.
In each case, the application may be filed by an appropriately qualified representative. It is possible for an applicant for a trade mark to file their own trade mark application, without the involvement of an IP professional. However, it is usually advisable to use an IP professional to undertake searches and give advice as to whether the mark is likely to be registrable, and to liaise with the examiner to address any objections or concerns that are raised.
Where is the application filed?
For a UK patent, an SPC covering the UK, a UK registered trade mark, or a UK registered design, the application may filed with the UK Intellectual Property Office (UKIPO). Alternatively, a UK patent or a UK registered trade mark may be sought pursuant to the relevant international system, by filing an application at the World Intellectual Property Office (WIPO).
For a European patent designating the UK (effectively this is a UK patent, which was originally filed as a European application), an application is made to the European Patent Office. Alternatively, as mentioned above, a European patent designating the UK may be sought pursuant to the international system (governed by the Patent Cooperation Treaty) by filing an application at WIPO.
For an EU registered trade mark or EU (Community) registered design, the application is filed at the EU Intellectual Property Office (EUIPO). An EU registered trade mark may also be sought by filing an application at WIPO.
For a UK plant variety right, the application is made to the UK Plant Variety Rights Office. For a Community Plant Variety Right, the application is made to the Community Plant Variety Office.
Details of the procedures for registration differ between the rights, with applications for a patent generally given the most substantive scrutiny.
An application for a patent in respect of an invention may be made by the inventor or by any other person acquiring from the inventor the right to apply (i.e. an assignee), or by both such inventor and such other person. A patent application may also be filed in the name of an assignee (e.g. a natural person or a company), who has obtained a written assignment of the invention from the inventor. In the absence of an agreement to the contrary, joint inventors or joint applicants may apply for a patent in equal undivided shares. A person who is not an inventor but who is a co-applicant with the inventor must nonetheless obtain assignment of rights from the inventor to enable that person to apply as a co-applicant with the inventor.
After filing of the patent application it is formally examined by the Patent Office. If all the formal requirements of the Patents Act and Regulations have been complied with, the Registrar 'accepts' the complete specification. The Registrar issues a written notice which gives the date of acceptance of the specification and which contains a statement that on publication of the acceptance in the Patent Journal, the patent concerned shall be deemed to have been sealed and granted as from the date of publication. The acceptance is then advertised in the Patent Journal. The application documents (which have been kept secret by the Patent Office up to this stage) then become open to public inspection. Except under exceptional circumstances, the patent may only be enforced against others 9 months after grant.
The Regulations of the Designs Act provide that, only the proprietor of a design may apply for the registration of the design, the proprietor being:-
- the author of the design;
- where the author of the design executes the work for another person, the other person for whom the work is so executed;
- where a person, or his employee acting in the course of his employment, makes a design for another person in terms of an agreement, such other person; or
- where the ownership in the design has passed to any other person, such other person.
After filing, the design application is formally examined by the Designs Office. If all the formal requirements of the Designs Act and Regulations have been complied with, the Registrar issues a notice of registration which gives the date of registration of the design and which contains a statement that the design is deemed to have been registered as from the effective date of the design application. The registration is then advertised in the official journal. The application documents (which have been kept secret by the Designs Office up to this stage), then become open to public inspection.
Plant Breeders’ Rights
The breeder. An application may only be made by a person who –
- is a citizen of, or is domiciled in, the Republic of South Africa or a convention country (i.e. a UPOV member country) or an agreement country (the USA is the only agreement country); or
- in the case of a juristic person, has a registered office in the Republic of South Africa or a convention country or an agreement country.
An application is filed with the Department of Agriculture, Forestry and Fisheries, accompanied by an application form, a technical questionnaire, a power of attorney (if filing is through an agent), an assignment if applicable and proof of payment of the official fees. For ornamental varieties, two colour photographs must be submitted. Plant material must be submitted for evaluation of the variety. Evaluation can be over one or several growing seasons, whereafter a plant breeders’ right is granted if the variety complies with the requirements of the Act.
Any person who has a bona fide intention to use a trade mark in relation to goods or services for the purpose of distinguishing those goods or services from the same goods or services connected in the course of trade with any other person is entitled to apply for the registration of such a mark.
Once an application is placed on file, it will undergo examination by the Trade Marks Office to determine inherent registrability as well as possible conflict with prior registrations or applications. It takes the Registrar approximately nine to twelve months to respond to a new application. After examination, the Trade Marks Office will either accept, preliminarily refuse or indicate the conditions subject to which the application may be accepted. Once accepted, the application is advertised in the Patent Journal. In the absence of objections by third parties within three months of the advertisement date, the application will proceed to grant and a certificate of registration will be issued.
An application for a certification trade mark will follow the same procedure set out above, but must be accompanied by an affidavit confirming that the applicant does not trade in the goods or services covered by the application. The rules governing the use of the trade mark should also be submitted. The rules should specify the conditions for use of the mark and the circumstances in which the proprietor may certify the goods or services.
An application for a collective trade mark must be accompanied by the rules governing the use of such mark. The rules shall specify the persons authorised to use the mark, the conditions of membership of the association and the conditions of use of the mark.
UAE or foreign nationals or UAE or foreign companies, who carry on business, and public legal persons. However trade marks can be refused where it is owned by "natural or legal persons with whom it is forbidden to deal".
PoA required at time of filing. Application will be examined for inherent and relative grounds within 6 months of filing. If accepted, it will be published for opposition purposes in 2 newspapers and the official gazette; if no oppositions are filed the trade mark will be registered.
Patents (UAE national filing)
The inventor or his successor in title
Supporting documents can be filed within 90 days of the application being filed. The application will be examined, usually within 3 years of filing. If no objections are raised, it will be processed through to publication and grant. Annuity fees must be paid each year to maintain the application/granted patent.
Patents (GCC patent filing)
The inventor or his successor in title
Supporting documents can be filed within 90 days of the application being filed. The application will be examined, usually within 18-24 months of filing. If no objections are raised, it will be processed through to publication and grant. Annuity fees must be paid each year to maintain the application/granted patent.
The inventor or his successor in title
Supporting documents can be filed within 90 days of the application being lodged. The application will not undergo a substantive examination, but it will still take around 5 years from filing. It will be processed through to publication and grant. Annuity fees must be paid each year to maintain the application/granted utility model.
Copyright & neighbouring rights
The author or his successor in title
The recordal of copyright is relatively straightforward taking up to a month to complete. The difficulties usually relate to the ability to put in place the required supporting documents for the recordal.
The inventor or the assignee may file for a patent to protect his work. The procedure for registration involves the filing of the application, accordance of the filing date, formality examination, classification and search, publication of the application, substantive examination, grant of the patent, publication of said grant, and issuance of the certificate.
As regards utility models, industrial designs, and layouts of integrated circuits, the procedure involves the filing of the application, accordance of the filing date, formality examination, classification, grant of the registration, and publication of said registration. The designer/creator or the assignee may file the application for registration of the foregoing intellectual property rights.
The applicant for a trademark may be a natural or juridical person. The procedure involves the filing of an application, search and examination, issuance of registrability report, response, recommendation for allowance, publication of such allowance, issuance of the certificate of registration.
While copyright subsists and is protected from the moment of creation, the author or creator of the work, his heirs, or assignees, may also apply for a certificate of copyright registration and deposit. The application may be filed directly with the National Library of the Philippines (“National Library”) or with the Philippine Intellectual Property Office (“IPO”) as the receiving office, the latter being deputized by the National Library as such. In applying for copyright registration and deposit, the applicant or his local authorized agent (if the applicant is non-resident foreigner) must submit the following:
- Duly accomplished application form. The application form must be notarized and accomplished in duplicate;
- Two (2) copies of the work as deposit;
- Technical description of the design, if the work applied for registration is an original ornamental design;
- Two (2) printed copies with copyright notice printed in front or at the back of the title page if it is a book and on any clear space thereof if non-book material, if the work applied for registration is published work;
- Two (2) manuscript and/or photocopies of the work without the copyright notice shall accompany the application, if the work applied for registration is unpublished work;
- A special power of attorney in favor of the local agent appointing the latter to complete the copyright application on behalf of the applicant, if the applicant is a non-resident foreigner;
- A document supporting the claim such as a deed of assignment or a waiver of copyright ownership, if the claimant is not the author; and
- A photocopy of the certificate of business name, if the applicant is a proprietor or a corporation
The inventor(s) or their legal respresentative, or a person or entity to whom the inventor has assigned or is under an obligation to assign the invention, may apply for a patent, with certain exceptions.
An entity that is using the mark in interstate or international commerce, or has a bona fide intent to do so, may apply for registration of a mark in the U.S. Under certain international agreements, owners of a foreign trademark application, a foreign trademark registration, including international applications and registrations, may seek registration for the same mark in the U.S.
The author or the author’s heirs or assignees can seek registration of a copyright, and otherwise own the rights provided for by common law to a work of authorship.
All of these intellectual property rights, except for plant variety rights, are to be applied for at the GERMAN PATENTS AND TRADEMARKS OFFICE. The plant variety rights must be applied for at the German Federal Plant Variety Office.
a) Patents, utility models, semiconductor topography rights
The GERMAN PATENTS AND TRADEMARKS OFFICE does not examine whether the applicant holds the material (monetary) rights to the invention and therefore generally anyone who can provide the necessary information and documents can apply for a patent, utility model or semiconductor topography right.
In order to avoid the substantive examination of the patent/utility model application being delayed due to the need to establish the identity of the inventor, the applicant shall be deemed, in the proceedings before the GERMAN PATENTS AND TRADEMARKS OFFICE, to be entitled to request the grant of the patent, Section 7 Patent Act, Section 13(3) Utility Model Act.
b) Trademarks and registered designs
In general it is the same for trade marks and designs. However, collective trademarks can only be applied for by incorporated associations.
c) Plant variety rights
The German Federal Plant Variety Office also does not examine whether the applicant is entitled to apply for the plant variety.
e) Procedure for registration
By filing the application documents and paying the application fee the applicant secures the date relevant for the priority of the application. The German Patents and Trademarks Office / the German Federal Plant Variety Office then examine the application to a different extent depending on the respective IP right. If the application complies with the legal requirements and if there is no obstacle to registration, the German Patents and Trademarks Office / the German Federal Plant Variety Office enter the IP right in the respective register. The registration is published in the respective journal. The owner receives a certificate of registration.
In principle any natural or legal person can apply for registration with the exceptions for POA/ PGI and .swiss-domains as set out below.
For obtaining a Swiss patent registration the applicant must file a request for a patent together with the required technical documents. The Intellectual Property Institute then formally examines the application and if all conditions are met, the application is published after 18 months. This is followed by the substantive examination during which the Institute's patent experts examine whether the legal requirements are met. Depending on the outcome of the examination, the patent is granted or rejected. If granted, the legal status of the patent (such as whether it is in force or has been cancelled) is entered in the patent register.
A supplementary protection certificate can only be filed for a patented and authorised pharmaceutical product or pesticide. The filing request must be submitted within 6 months either of obtaining the first market authorisation or of the confirmation of the patent grant.
As for trademarks, the applicant needs to provide the minimum information required, i.e. specify the trademark, name and address of the owner, list of goods and services, and pay the application fee. The Intellectual Property Institute will then examine the application and notify the applicant about formal deficiencies of the application or material objections to the registration (such as non-compliant list of goods and services, descriptiveness or misleading nature of the chosen mark). The applicant can file a counterstatement on such issues before the Intellectual Property Institute proceeds with an official decision on the admissibility/inadmissibility of the registration.
For obtaining a POA or PGI the applicant must either file with the Federal Office for Agriculture (for POA and PGI for agricultural products) or the Intellectual Property Institute (for POA and PGI not related to agricultural products). An application for a POA or PGI can only be submitted by a representative group of producers concerned and must include a product specification that defines the product and its method of production. The Federal Office and the Institute will then examine the application and notify the applicants in case of any deficiencies in order for the applicants to either remedy the deficiencies or file a counterstatement.
For obtaining a plant variety registration, the applicant must file the specific plant variety registration form provided by the Federal Office of Agriculture (available in English via https://www.blw.admin.ch/blw/en/home/nachhaltige-produktion/pflanzliche-produktion/saat--und-pflanzgut.html). The Federal Office will then examine the application and notify the applicant in case of any deficiencies in order for the applicant to either remedy the deficiencies or file a counterstatement.
For obtaining a design registration the needs to provide the minimum information required, i.e. specify the design by means of pictures or photographs, give the name and address of the owner, a classification of the goods, and pay the application fee. Providing a design description is optional.
For obtaining a topography registration the applicant must submit a request with a detailed description of the topography to be protected and its scope of use. Also, the applicant must show that the topography in question falls within the scope of the Swiss Topography Act. The Swiss Topography Act only applies to i) topographies of Swiss manufacturers and manufacturers whose habitual residence or business domicile is in Switzerland; ii) topographies that were first distributed in Switzerland; or iii) topographies protected in Switzerland through international treaties.
As for .swiss-domains, their registration is reserved exclusively for companies with sufficient link to Switzerland, i.e. a public body or organization under Swiss public law, a legal entity registered in the Swiss Commercial Register having its seat in Switzerland and an effective site of administration in Switzerland, or an association or foundation not registered in the Swiss Commercial Register having its seat and an effective site of administration in Switzerland.
As regards inventions and utility models, and semiconductor topographies an application may be filed by an employer, inventor (author), or their legal successors. After examination of formalities utility model is granted and a topography of integrated circuits is registered. Patent for invention is granted after examination of formalities and substantive examination.
As regards trademarks any natural person or legal entity may apply for trademark registration. The trademark is registered after formal examination and substantive examination. Oppositions are available only during examination.
As regards industrial design an application may be filed by an employer, inventor (author), or their legal successors. After examination of formalities a design is registered.
As regards copyright an author or his employer (or their legal successors) can apply for copyright registration. The procedure of copyright registration includes filing the application documents and recordation of the copyright, provided that formal requirements to the application documents, are met.
As regards plant variety an author and its employer (or their legal successors) can apply for its registration. The procedure of plant variety registration includes filing of application to the relevant authorities, formal examination and substantial examination of application including examination as to the name of variety and examination as to dissemination of a variety.
As regards designations of origin and geographical indications the following persons can apply for their state registration:
- a person or a group of persons that in the claimed geographical place manufacture goods, the particular properties, certain qualities, reputation or other characteristics of which are related to that geographical place;
- the consumer associations;
- the institutions being directly related to production or investigation of relevant products, articles, technological processes or geographical places.
The right to use the registered appellation of origin of goods or the registered geographical indication of origin of goods is vested, subject to the registration of that right, in manufacturers which at the geographical place designated in the Register produce goods, the particular properties, certain qualities or other characteristics of which correspond with those included in the Register.
In case the applicant is non-resident of Ukraine, applications for registration of inventions, utility models, industrial designs, trademarks, integrated circuits, geographical indications, should be filed through Ukrainian trademark / patent attorney.
The procedure of a trade name state registration is not provided in Ukraine. The state registration of a company may be considered as the first use of a trade name by its owner.
Real or legal persons who are domiciled in Turkey or engage in commercial activities in Turkey and those who are entitled to make an application in Turkey based on the relevant international agreements. The trademark registration procedure consists of application, formal analysis, review of the application in terms of definite grounds for refusal and publication of the same, assessment of the opinions and objections of third parties and registration of the application.
Patent registration procedure, on the other hand, consists of application, formal analysis, issuance of research report, announcement in the Bulletin, review phase and issuance of an investigation report, and registration processes. Registration of design rights consists of application, formal analysis, entry into the registration and announcement in the Bulletin, assessment of the objections of third parties and registration processes.
Registration of geographical indications and traditional product names consists of application, formal analysis, and announcement in the Bulletin, assessment of the objections of third parties and registration processes.
The inventor, or the person(s) to whom the inventor’s rights have succeeded is/are entitled to apply for a patent registration. Legal entities may not be inventors but can indeed apply for patent regarding an invention to which it has acquired the rights. In accordance with the Patent Decree (SFS 1967:838), Swedish patent applications shall be filed at the PRO. International patent applications designating Sweden shall be filed with the public authority or international organisation authorised as a receiving office according to the Patent Cooperation Treaty and its regulations. Application forms are provided electronically at the PRO’s website. An application shall be made in writing and may be submitted electronically or physically. The application shall include information about the applicant(s), the inventor(s), a factual designation of the invention applied for etc.
Where an application is complete and there are no obstacles to grant a patent, the patent authority shall notify the applicant that a patent can be granted. Within two months of the date of notification, the applicant shall pay a fixed grant fee and, if the patent claims are written in English, shall submit a Swedish translation of the patent claims. In the event this does not occur, the application shall be dismissed. When the applicant has fulfilled its duties in accordance herewith, and there is still no obstacle to the patent, the patent authority shall grant the application. The decision shall be published and the patent is granted. A granted patent shall be recorded in the patent register maintained by the patent authority and patent letters shall be issued. Once the patent has been granted, the claims may not be amended so as to expand the scope of the patent protection.
(b) Right to Trademarks
Both natural and legal persons may apply for a registration of a Trademark. The applicant shall further provide a list showing the class(es) to which the goods and/or services belong. This classification provides the basis for and defines the scope of an exclusive right. The applicant shall also, where deemed necessary by the PRO, describe the mark in writing and state its distinguishing characteristics. Further, where an application for registration refers to the form or design of a product or its packaging, the applicant shall, when deemed necessary by the PRO, submit a sample of the product or packaging for storage at the PRO’s office.
The application shall contain: information regarding the applicant’s name or company name and address; information regarding any representative’s name and address; a clear reproduction of the trademark; and a list of the goods or services to which the trademark pertains and the classes to which they belong. An application for registration of a collective mark, confirmation mark, or certification mark shall also contain information regarding the prerequisites which apply to permissible use of the trademark.
Application forms are provided electronically at the PRO’s website.
(c) Right to Trade Names
The Trade Name is registered in connection with registration of the company at the SCRO. The application, which needs submitted in original to the SCRO shall be signed by a company representative authorised to sign on behalf of the company. Subject to an additional fee of approximately SEK 1,400 the applicant may have the proposed Trade Name(s) preliminary reviewed by the SCRO.
Application forms are provided electronically at the SCRO’s website.
(d) Design Protection
The Designer or the Designer’s successor may apply for a registered Design. The application shall be made in writing and submitted at the PRO. The application shall contain information regarding who created the design and about the product or products to which the design is intended to be applied or in which it is intended to be incorporated, and pictorial material showing the design. If registration is sought by a person other than the designer, the applicant shall prove his or her right to the design. If the application documents are complete and the PRO has not found any obstacle to the registration after examination the Design protection shall be granted and a notice to that effect be published.
Application forms are provided electronically at the PRO’s website.
(e) Plant Variety Rights
Any person or representative for a person who has produced or discovered a plant variety or that person’s successor may acquire an exclusive right to the variety through registration of the plant variety at the Swedish Board of Agriculture (the ‘SBAC’). Approval of the registration means that the variety should be admitted to the Swedish list of varieties or admitted to the EC common catalogues of varieties of agricultural plants or vegetable plants or fruit plants. For a variety to be approved and admitted to the Swedish national list of varieties, it must be technically examined for at least two years in cultivation, evaluating the variety’s distinctness, uniformity and stability (the ‘DUS-test’). A variety of an agricultural species then has its value for cultivation and use tested for at least 2 years in the cultivation and use test (VCU test) executed by the Swedish College for Agriculture. The uniqueness of a denomination or name for the variety is checked in the Swedish Community Plant Variety Office’s database of variety denominations.
Application forms are provided electronically at the SBAC’s website.
PATENTS & UTILITY MODELS:
All natural and legal persons can apply for a patent or for a Utility Model (also public administrations).
Procedure for registration
In order to have a patent granted in Spain, there are three different options:
- Via national application. (application is drawn according to the Spanish Patent Act).
- Via European application (through the European Patent Convention, being Spain a party to the Treaty since 1986.
- Via PCT application (being Spain a party to the Treaty since 1989).
For the purpose of obtaining a filing date, a patent application should contain a request to grant a patent (including data of the applicant, description, claims, abstract of the invention and drawings) and the confirmation of the official fee payment.
Further to the filing of the application, the SPTO undertakes out a formal ex officio examination. A Report on the State of the Art is prepared and published, and the applicant can modify the terms of the application. The SPTO will examine the patent application on the merits (utility models are not examined on the merits).
The granting of the application opens a six-month period for third parties´ possible oppositions.
- Spanish natural or legal persons.
- natural or legal persons who are habitually resident or have an effective and serious industrial or commercial establishment in Spain or who enjoy the benefits of the Paris Convention for the Protection of Industrial Property of March 20, 1883 (in accordance with the provisions of the Act in force in Spain).
- natural or legal persons of countries members of The World Trade Organization.
- foreign natural or legal persons of other countries, provided that the legislation of their home state recognized the right of Spanish natural or legal persons to register trademarks in such country (mutual recognition principle).
Procedure for registration:
Further to the filing of the application the Spanish Patents and Trademark Office (SPTO) carries out a formal ex officio examination.
In the case that, the trademark application complies with the corresponding necessary formalities the application is published.
The publication of the application opens a period of two months for third parties´ possible oppositions followed by a substantive examination by the Spanish Trademark office.
For the case that there have been third parties oppositions or that the SPTO considers that the trademark application may incur in any prohibition, the trademark application is suspended and the applicant is given one month to plead, after which the SPTO issues the corresponding decision on the application.
The interested parties may submit to arbitration the disputed issues arising during the procedure for the registration of a mark.
The arbitration may only deal with the relative grounds for refusal. In no case may questions be submitted to arbitration regarding the occurrence or not of formal defects or absolute grounds for refusal.
- Spanish natural or legal persons.
- Natural or legal persons who are habitually resident or have an effective and serious industrial or commercial establishment in Spain or who enjoy the benefits of the Paris Convention for the protection of Industrial Property of March 20, 1883, (in accordance with the provisions of the Act in force in Spain).
- Nationals of the Member States of the Organization World Trade Organization.
- Foreign natural or legal persons of other countries, provided that in the State of which they are nationals, Spanish natural or legal persons are allowed to register their designs in such country (mutual recognition principle).
Procedure for registration:
Once the application for design registration has been received, the SPTO will examine ex officio whether the object of the application constitutes a design in a legal sense and if it is not contrary to public order or morality.
The SPTO shall also examine ex officio whether the application presents a defect not received in previous procedures which makes it impossible to publish the design, classify the products to which it is to be applied or, where appropriate, revise the classification made by the applicant and verify whether the products applied for in multiple applications are integrated in the same class of the International Classification.
If the SPTO´s ex officio examination reveals that the application is subject to any of the grounds for refusal, the registration procedure will be suspended and will be communicated to the interested party so that within a period of one month present its allegations, eliminate the element causing the repair or request the change of modality.
Once the period to reply to the suspension of the registration procedure finished (irrespectively of whether the applicant has answered, or not), the SPTO shall decide on the application:
- granting the design registration in whole or in part;
- refusing the design registration; or
- having all or part of the application as withdrawn.
The resolution of concession, total or partial, will be registered in the Designs Registry and published.
The deadline for the presentation of objections will be two months, counted from the date on which the publication of the registered design takes place.
At the end of the deadline for submitting objections, the opposition writs and evidence submitted shall be transferred to the registered design owner who will then have two months to submit claims and, where appropriate, to modify the design.
Once the reply to the oppositions has been received, or after the deadline for doing so, the SPTO shall issue a reasoned decision, estimating, in whole or in part, or rejecting the oppositions filed.
The Designs Registry shall record the filing of the oppositions and the identity of the opponents, as well as their estimation or rejection.
The interested parties may submit to arbitration the disputed issues arising during the opposition proceedings.
The arbitration may only refer to the following reasons for opposition:
- That the registered design is incompatible with a design protected in Spain by virtue of a request or registration with a prior date of presentation or priority, but which has only been made accessible to the public after the date of presentation or priority of the later design.
- That the registered design incorporates a trademark or other distinctive sign previously protected in Spain whose owner is entitled, by virtue of such protection, to prohibit the use of the sign in the registered design.
- That the registered design implies an unauthorized use of a work protected in Spain by copyright.
To register a work, the author needs to submit a completed application form and to pay an official fee, that generates a public record kept by the Copyright Office (“Registro de la Propiedad Intelectual”). The Registry assigns a filing date, and does not examine the artistic merit (originality) of the deposited work, nor authorship.