experts in PROTECTING your 
intellectual property

One of our trade mark attorneys, Richard Stilwell, is representing Lysaght by joining IP specialists from around the world at the 2024 AIPPI World Congress  in Hangzhou, which starts this weekend.  He is also taking the opportunity to visit several clients in China before and after the conference, in various locations.    We look forward to receiving Richard’s report on his trip once he returns home.

On 1 October 2024, Ethiopia’s Council of Ministers approved the country’s accession to the Paris Convention for the Protection of Industrial Property and the Madrid Protocol for the International Registration of Marks.  Ethiopia’s accession to these IP treaties and to trade agreements such as the World Trade Organization (WTO)’s Agreement on Trade-related Aspects of Intellectual Property Rights (TRIPS), along with the necessary modernisation of Ethiopia’s IP  laws, will serve to bring Ethiopia onto the global stage for IP and help to stimulate trade and investment in the country.

We have just received information from the Head of the Patent Department at OAPI that Annexes I and II  (which relate to patents and utility models, respectively) of the revised Bangui Accord will be brought into force on 1 January 2025.  We expect OAPI to issue some further information and guidelines as to the implementation of the new law in the near future. 

The Lebanese Intellectual Property Office (IPO) is currently facing significant operational difficulties due to the ongoing economic and political instability in the country. The challenging environment has led to staff shortages, as many employees are unable to attend work. In addition, technical issues with the online portal have further complicated the IPO’s ability to process applications efficiently.

On 15 September 2025, the Qatari Patent Office has reinstated the requirement to pay annuities on pending applications.  As a result, applicants are required to ensure that all outstanding annuity fees are paid on each anniversary of the effective filing date of their patent applications (which, for PCT national phase applications, is deemed to be the international filing date), from the 2^nd annuity onwards, regardless of whether a grant decision has been issued. 

Uruguay will deposit its instrument of accession to the Patent Cooperation Treaty on 7 October 2024, and the agreement will enter into force 3 months later, on 7 January 2025.  This accession to the PCT represents a culmination of the country’s efforts to support locally generated inventions, foster investment, create new business opportunities, and elevate Uruguay’s position in the international patent arena.  

We remind all applicants and owners of Cayman Islands patent, trade mark and design registrations, and all owners of trade marks in the Turks & Caicos Islands, that the next annual maintenance fees (AMFs) for such cases are due for payment on 1 January 2025.  If these annual fees are not paid by 31 March 2025, penalty fees will accrue. 

IP Australia has just announced some changes to the official fees for patents, trade marks, designs and plant breeder’s rights, which will come into effect on 1 October 2024.  Inter alia, the filing fees for patents and plant breeder’s rights will increase, trade mark filing fees will remain unchanged, and designs filing fees will decrease.  

A resolution was published in Argentina on 26 August 2024 which requires that, within 60 calendar days from notification in the Patent Bulletin, applicants with pending patent applications in Argentina must make an express statement as to whether or not the priority claimed has been granted in the country of origin.

The Intellectual Property Office of the Philippines (IPOPHL) has issued a memorandum which requires that the fees for the issuance and publication of a trade mark renewal must now be remitted along with the payment of the renewal fee instead of upon receipt of a Notice of Issuance.  This new practice took effect on 25 July 2024 and it should serve to expedite the renewal process.

The Legislative Assembly of El Salvador has recently approved a new Intellectual Property Law, which will replace, update and combine into a single body the current  "Law of Trademarks and Other Distinctive Signs" and the 1993 "Law of Intellectual Property".  It will also create the Salvadoran Institute of Intellectual Property (IPSI) which will be in charge of managing procedures and mediating conflicts arising from IP rights.

The Libyan Trade Mark Office has announced that it will resume accepting new trade mark applications, as of 2^nd September 2024. 

A new Law on the Protection of Intellectual Property was published in Rwanda on 31 July 2024 and came into force on the same day. The Law paves the way for a more streamlined approach for the filing of patent and trade mark applications, as well as clarifying aspects of their prosecution and registrability.

For the second consecutive year, Lysaght has participated in the Business Improvement Programme led by Brian Butler and Jersey Business. This initiative aims to enhance company efficiency, productivity, and market competitiveness for future growth. Delegates Wilfried Schreder and Tatiana Despres achieved Green Belt Certification from the International Lean Six Sigma Institute.

It has recently been announced that Myanmar’s long-awaited Patent Law 2019 finally came into effect on 31 May 2024. Whilst the Patent Registry has yet to announce an official date for accepting patent applications, or the documentary and formality requirements that will apply, applicants who are interested in seeking patent protection in Myanmar should consider evaluating their inventions and be ready to submit their applications as soon as the Patent Registry begins to accept them.

It is with great pride that we announce the promotion of Isabelle Mbomè from Ekémé Lysaght SARL to the prestigious role of Avocate Stagiaire of the Cameroon Bar Association. Once Isabelle has completed her apprenticeship, she will have the unique rights of audience to represent our clients in Court. This fantastic and well-deserved accolade will further bolster the range of OAPI services which Lysaght can offer to our clients, particularly in the in-house management of contentious matters.

An official circular was issued by the Qatari Intellectual Property Department on 25 June 2024, outlining changes to the requirements for Powers of Attorney (POA) for IP matters

The Qatari authorities have recently updated their policy on the requirement to pay annuities in respect of patent applications. The newly issued policy dictates that the 4th and subsequent patent annuities cannot be paid until the grant decision is issued, with no option to do so before that time. Accumulated back annuities are payable along with the grant fee, and then subsequent annuities are payable annually on each anniversary of the filing date.

The Ministry of Industry and Commerce (MOIC) of Bahrain and the China National Intellectual Property Administration (CNIPA) have launched a Patent Prosecution Highway (PPH) pilot program, with effect from 1 May 2024 and for a trial period of 5 years. As with other PPH agreements, applicants who receive a positive ruling on patent claims from either the MOIC or CNIPA to expedite the examination of corresponding claims in the other office.

ARIPO and the China National Intellectual Property Administration (CNIPA) have recently implemented a bilateral Patent Prosecution Highway (PPH) pilot program which is being trialled for 5 years from 08 June 2024. The Program allows an application whose claims have already been determined to be patentable by CNIPA to undergo an accelerated examination at ARIPO upon request by an applicant, and vice versa.

Laos has recently joined Morocco, the Republic of Moldova, Tunisia, Cambodia and Georgia as a “validation state” of the European Patent Office. This development will provide EP patent right holders with a streamlined market access into Laos and will also allow companies, research institutes and inventors in Laos to access the benefits of the European patent system.

Qatar becomes the 131st member of the Madrid Protocol, enabling international trade marks to designate this Gulf state from 3rd August 2024.

Many of you will recognise Rita’s name as our long-standing and greatly experienced Trade Mark Renewals Manager, and some of you may even have met her in person or in a virtual call in years gone by. Rita joined Lysaght way back in 1980 and is one of our longest serving team members. 

She has built up several decades of knowledge and practical understanding in her role and, to help you get to know her better, we put some questions to Rita to find out more about what makes her tick …

All new UK applications for patents, trade marks or designs must appoint an address for service in the UK, Gibraltar or the Channel Islands. Since 01 January 2024, all comparable trade marks and re-registered designs derived from EU rights post-Brexit must have a UK address for service to respond to challenges filed by third parties.

The Intellectual Property Office based in Sana’a, Yemen has announced that trade mark rights owned by US and British companies are now invalid, and that they will no longer accept new applications. Furthermore, ongoing civil unrest has led to a de facto two-state country. To obtain trade mark, design and patent protection across the whole country, it is necessary to file applications in both Sana’a and Adan Registries.

Some new trade mark regulations came into force in Uganda on 2 February 2024 which, inter alia, have introduced the requirement that trade marks and notices be published in the Uganda Gazette, as was the case pre-2021.

The Government of Jersey has clarified its position on whether EU trade marks automatically extend to Jersey under current legislation, confirming that no such coverage has existed since April 2009. Trade mark owners wishing to obtain protection in Jersey should re-register UK national trade marks, or rely on the automatic coverage granted to IR(UK) designations.

We summarise here some recent amendments to the Trade Mark Regulations in Lebanon, which have brought about changes to the term of protection and some of the official fees associated with trade marks.

The Trade Marks Act 2023 and Trade Marks and Service Marks Regulations Amendment and Validation Act 2023 received formal approval in Bermuda on 13 October 2023.

Our Senior Trade Mark attorney, Martin Chinnery, will shortly be retiring. Whilst this is sad news for all of us here at Lysaght, it marks the start of an exciting new chapter for Martin.