PETOŠEVIĆ

November 2020

Bulgaria Amends Patent Law

The amendments to the Bulgarian Law on Patents and Utility Model Registration entered into force on October 30, 2020.

The most important change brought by the new law is that legal practitioners are now allowed to represent clients before the Bulgarian IPO without passing a qualifying examination on patent, trademark or design law. They can now act without having to register as IP representatives. This change applies not only to patents but to all industrial property rights.

The occupation of an IP representative is now for the first time recognized as a regulated profession. The law now includes the requirements for the exercise of the profession and the rules on the qualifying examination and training of future professionals. There are also rules on the recognition of the professional qualification of foreign IP representatives, as well as rules on the temporary and occasional provision of services by foreign professionals. The law also regulates the associations of representatives and introduces a register of IP representatives and associations. It defines their rights, obligations, liability and insurance, as well as the rights of their clients.

The patent-specific part of the new law provides for electronic filing and electronic correspondence with the IPO. There will be new electronic registers of patents, utility models and supplementary protection certificates, while the introduction of electronic files is also envisaged in the future.

In the field of substantive patent law, plants and animals obtained by essentially biological processes are now excluded from patentability. Although such processes were already excluded from patentability, the legislation did not cover products obtained by such processes. The amendment brings the Bulgarian patent law in line with Rule 28(2) of the Implementing Regulations of the European Patent Convention.

The rules on employee inventions have been slightly amended as well. The law introduces a possibility for contractual derogation from the principle that unless the employer files a patent application within three months after receiving a notification from their employee that an invention was created, the right to apply for a patent shifts to the employee. This rule clearly favors employers who can extend the default three-month period in the employment contracts. The provision also seems to open the possibility to completely deprive employees of the right to file patent applications, but this issue will have to be resolved by subsequent case law.

A significant change in the patent prosecution procedure is that the applicant is no longer required to file a separate search and substantive examination request and pay the corresponding fees within 13 months from the filing or the priority date. All fees, including the search and substantive examination fee and the publication fee, are now paid upfront at the time of filing. Applicants therefore lose the possibility of abandoning the application prior to its publication and substantive examination by not filing the search and substantive examination request. Unless they explicitly withdraw the application, the IPO will publish it and proceed with the search. Many local applicants, unaware of the requirement to file such an additional request, were missing the deadline and losing their rights. This increased the number of requests for reinstatement of rights, so the change is aimed at reducing the number of such requests and streamlining the procedure for users.

The period to request reinstatement of rights has been significantly shortened, to one month from learning of the expiry of the term and no later than three months from the expiry. Previously it was three months from learning of the expiry but no more than a year from the expiry. This change again aims at reducing the number of reinstatement requests filed with the IPO.

In the field of utility models, deferment of the registration must now be requested at the time of filing. Until now, deferment could be requested within a period of three months after the filing date.

Certain provisions concerning the Unitary Patent have been added, but they will apply only if and when the Agreement on a Unified Patent Court enters into force.

By: Dimitar Batakliev

For more information, please contact Dimitar Batakliev at our Bulgaria office.

Russia Ratifies EAEU Trademark Agreement

The Russian President signed the Law on Ratification of the Agreement on the Eurasian Economic Union Trademarks, Service Marks and Appellations of Origin on November 9, 2020. The law entered into force on November 19, 2020, making Russia the first EAEU member state to ratify the EAEU Trademark Agreement.

The Agreement was signed on February 3, 2020 by all EAEU members states – Armenia, Belarus, Kazakhstan, Kyrgyzstan, and Russia. The Agreement will enter into force once all member states bring their registration procedures and official fees in line with the Agreement and deposit their instruments of ratification to the Eurasian Economic Commission (EEC).

Under the unified system, right holders will be able to obtain legal protection simultaneously in all EAEU member states by submitting one application to any of the national offices, i.e. they will be able to choose a “receiving office”. Each trademark application will undergo preliminary (formal) and substantive examination, with the entire registration procedure estimated to take approximately one year. The EAEU trademark will be kept in a single register administered by the EEC.

By: Tatyana Kulikova

For more information, please contact russia@petosevic.com.

Kazakhstan Ratifies Protocol on Eurasian Design Patents

The Kazakh President signed the Law on Ratification of the Protocol on the Protection of Industrial Designs to the Eurasian Patent Convention on November 23, 2020. The law will enter into force in Kazakhstan on December 5, 2020.

The Protocol was adopted by the Eurasian Patent Organization (EAPO) member states on September 9, 2019, introducing the Eurasian system of protection for industrial design patents, along with the already existing regional protection for inventions.

There are eight EAPO member states: Armenia, Azerbaijan, Belarus, Kazakhstan, Kyrgyzstan, Russia, Tajikistan and Turkmenistan. So far, the member states that have signed the Protocol are Armenia, Azerbaijan, Kazakhstan, Kyrgyzstan, Russia and Tajikistan, while the delegations of the remaining two members, Belarus and Turkmenistan, have announced the implementation of domestic procedures necessary for their participation in the Protocol. Besides Kazakhstan, the Protocol was also ratified by Armenia, Azerbaijan and Kyrgyzstan.

The Protocol will enter into force for the first three states that have ratified or acceded to it three months after the third state deposits its instrument of ratification. In all other member states, the Protocol will enter into force three months after the state’s accession or deposit of its instrument of ratification. The only member state that has so far deposited its instrument of ratification is Kyrgyzstan.

According to the Protocol, Eurasian design patent applications will be filed with the Eurasian Patent Office (EAPO) either directly or through the national patent office of an EAPO member state. All applicants will follow uniform examination requirements, use only the official language of the EAPO – Russian, and pay a uniform procedural fee. Once granted, Eurasian design patents will be valid for five years counting from the application filing date, and will be renewable for additional five-year periods up to four more times, so that the maximum term of protection does not exceed 25 years from the application filing date.

Prepared by: Ainur Zhussipova

For more information, please contact kazakhstan@petosevic.com.

Ukraine Creates New IPO

The law No. 703-IX on the creation of the national intellectual property office entered into force in Ukraine on October 14, 2020. The law establishes a two-level system of intellectual property protection in Ukraine and finalizes the institutional IP reform envisaged by the National Strategy for Sustainable Development “Ukraine 2020”.

The Old System

For a long time, Ukraine had a three-level state IP protection system comprising the Ministry of Economy, the State Service of Intellectual Property as the national IPO, and the State Enterprise "Ukrainian Intellectual Property Institute" (Ukrpatent) as the examining authority. The State Service of Intellectual Property ceased to exist in 2016 and its functions were transferred to the Ministry of Economy.

The New System

The new two-level system includes:

• The Ministry of Economy, which remains the primary supervisory authority responsible for the development and implementation of the state intellectual property policy; and
• The newly created National Intellectual Property Authority (NIPA), a non-profit state organization acting as the single national IPO and performing public functions in order to implement the state IP policy.

According to the explanatory note to the law, the NIPA should be established based on the Ukrpatent in order to preserve Ukrpatent’s existing knowledge and expertise.

The NIPA’s Functions

The NIPA, absorbing the functions of the Ukrpatent and certain functions of the Ministry of Economy, will be responsible for the following:

• Examination of applications for IP rights (patents, utility models, trademarks, industrial designs, topographies of integrated circuits, geographical indications and copyright);
• Registration of IP rights and issuance of letters patent and certificates;
• Invalidation and cancellation of IP registrations;
• Training, attestation, and registration of patent attorneys;
• Publication of official information, maintenance of IP rights registries, provision of excerpts and extracts, etc.; and
• Representation of Ukraine before regional and international organizations, particularly before the WIPO; the NIPA will perform functions of the International Searching Authority and the International Preliminary Examining Authority under the Patent Cooperation Treaty, and of the national Office under the Hague Agreement and the Madrid Agreement and Protocol.

The NIPA’s Structure

The head of the NIPA will be appointed by the Ministry of Economy based on the results of an open competition. The NIPA head may have three deputies, each also appointed by the Ministry.

The law also provides for the establishment of the NIPA’s Supervisory Board consisting of representatives appointed under a quota system by the Parliament, Ministry of Economy, Ministry of Education and Science, Ukrainian associations of patent attorneys and the National Academy of Sciences. The Board may also have two representatives from international or regional IP organizations, with the right to an advisory vote.

The NIPA will also include:

• The Chamber of Appeals, an independent collegial body which will consider objections to the NIPA's decisions, applications for cancellation of IP rights and applications for recognition of trademarks as well-known in Ukraine; and
• Attestation and Appellate Commissions for patent attorney attestation matters.

Further regulations regarding these NIPA bodies should be adopted by January 14, 2021 (within six months from the law's publication date).

The Current Situation with the NIPA and Its Formation

At the initiative of the Ministry of Economy and with the support of the Ukrainian Government, the Ukrpatent started performing the NIPA's functions on October 14, 2020.

It was expected that the NIPA would be a new state organization, absorbing Ukrpatent’s functions along with several functions of the Ministry of Economy, which is why this de facto launch of the NIPA through Ukrpatent provoked a discussion among IP practitioners. Their main concern is that the new status of the Ukrpatent and its newly assigned functions are not explicitly outlined. The IP community also expects the establishment of the Chamber of Appeals as an integral part of the NIPA-Ukrpatent.

It is expected that the situation will be clarified by January 14, 2021, when further regulations should be adopted and all legal acts brought in line with the new law. After this date, the institutional reform of the Ukrainian state IP system may be considered as finalized.

Prepared by: Igor Alfiorov

For more information, please contact ukraine@petosevic.com.

Romanian IPO Improves Electronic Filing Services

While the online filing of industrial design applications has been available since 2014, on October 28, 2020, the Romanian IPO enabled the electronic submission of documents for the following post-grant procedures related to industrial designs:

• Changes related to the right holder (name and address);
• Changes related to the representative;
• Transfer of rights;
• Licenses;
• Renewals; and
• Oppositions.

Both trademark and patent applications can also be filed online, while the online submission of documents related to patent post-grant procedures is not yet available.

On a similar note, while the legislation providing for electronic signatures has been in force since 2001, the Romanian IPO only recently started accepting electronically signed documents, during the COVID-19 pandemic, on condition that they are digitally certified as required by the law.

The Government Emergency Ordinance No. 38/2020 on the use of documents in electronic form by public authorities and institutions was issued on March 30, 2020 in order to implement the Regulation (EU) No. 910/2014 on electronic identification and trust services for electronic transactions in the internal market and repealing Directive 1999/93/EC. The Emergency Ordinance was also issued to minimize close, face-to-face contact between the public administration authorities and the public.

In this context, the Romanian IPO announced that certified electronic signatures will be accepted when filing applications by means of the IPO’s electronic filing platform, as well as when filing other forms provided on the IPO’s website or other requests concerning IP rights registration procedures. The use of electronic signatures is not yet available for patent applications.

By: George Irimescu

For more information, please contact George Irimescu at our Romania office.

Russian IPO Develops Fast-Track Examination for COVID-19-Related Patents

Since the start of the COVID-19 pandemic, the Russian Intellectual Property Office (Rospatent) has been developing a fast-track patent examination program for inventions related to technologies for tackling viruses and associated diseases (pneumonia).

The program covers the following fields: antiviral medicines, diagnostic tests, medical devices, vaccines, and personal protective equipment. The prosecution of such applications is prioritized and the applications can be filed without paying the official fee usually associated with the accelerated examination. Under this program, Rospatent makes the final decision on patent applications within an average of 22 days.

From April to September 2020, 340 applications were filed under the fast-track patent examination program. Five of these applications were filed by foreign applicants, while the rest were filed by Russian applicants. Around 60 patents for inventions and utility models have so far been granted, including 6 patents for a vaccine, 7 patents for drugs used in the treatment and prevention of COVID-19 and associated complications, 11 patents for diagnostic tests and methods, 26 patents for disinfecting technologies and 6 patents for personal protective equipment. There are a few Russian patents related to a vaccine against COVID-19 that have been granted regulatory approval in Russia, in particular Gam-COVID-Vac (Sputnik V) and EpiVacCorona.

By: Natalia Osipenko

For more information, please contact Natalia Osipenko at our Russia office.

Uzbekistan to Introduce New Food Labeling Requirements

On November 10, 2020, the Uzbek President signed a decree establishing that food product labels should include information on the safety or harm caused to consumers’ health by the salt, sugar and fat content. This requirement will apply to both imported and domestic products and it will be implemented in two stages.

During the first stage, starting on July 1, 2021, the sale of food products without such safety labels will be prohibited in educational, sports and medical institutions. Additionally, at this stage, products marked with such labels will be advertised or displayed at preferential rates. It is expected that a new version of the Law on Advertising reflecting this novelty will be considered by the Uzbek Parliament in December 2020.

During the second stage, starting on January 1, 2025, the new labeling requirement will be mandatory for all food products on the market.

Starting from March 2021, it is expected that the authorities will develop a general regulation on food product safety, as well as the guidelines on the safe amounts of salt, sugar and fat in food products based on the recommendations of the World Health Organization. New regulations on the marketing of food products with high salt, sugar and fat content are also expected in the second quarter of 2021.

By: Djakhangir Aripov

For more information, please contact Djakhangir Aripov at our Uzbekistan office.

Kazakhstan Adopts Regulations on Collecting and Processing Personal Data

The Regulations on Collecting and Processing Personal Data entered into force in Kazakhstan on October 28, 2020. The Regulations determine the procedure and requirements for handling personal data from its collection to its destruction.

According to the Regulations, the collection and processing of personal data may be carried out by state bodies or legal entities that have the right to own, use and dispose of databases containing personal data, as well as by third parties that received the data owner’s or his/her legal representative’s authorization.

A person or his/her legal representative may withdraw consent to the collection and processing of personal data in written or electronic forms, through an e-government web portal dedicated to personal data security, or in any other way which confirms the withdrawal of consent and does not contradict Kazakh legislation.

The distribution of personal data that goes beyond the purposes directly related to the state body, legal entity or third party’s functions, duties and tasks must be carried out with the consent of the person or their legal representative. Personal data becomes depersonalized for purposes of statistical, sociological, scientific, and marketing research.

The state body, legal entity or third party must delete personal data or destroy the material carriers of personal data within one day in the following circumstances:

• At the end of the retention period;
• Upon termination of legal relations with the person whose data it is storing;
• When a court decision mandating the data destruction enters into force.

The collection and processing of personal data were previously not regulated by any particular regulations. The Law on the Protection of Personal Data from 2013 only contained general rules and determined that the Ministry of Digital Development, Innovation and Aerospace would be the competent body authorized to approve the regulations on collecting and processing personal data.

Prepared by: Dayana Auezova

For more information, please contact kazakhstan@petosevic.com.

Serbian Customs Seize Fake Chocolate Bars, Chewing Gum, Energy Drinks

On November 6, 2020, Serbian customs officials seized 11,000 chocolate bars, 16,000 packs of chewing gum, and almost 2,000 cans of energy drinks believed to infringe numerous trademarks, including Milka®, Snickers®, Bounty®, Kinder Bueno®, Mars®, Twix®, Orbit® and Red Bull®. The goods were seized during the inspection of a warehouse outside the town of Raška in southern Serbia.

On November 9, 2020, while inspecting a van travelling from Bulgaria to Germany at the Gradina border crossing point with Bulgaria, Serbian customs officials seized more than 40 jackets, over 40 sweatpants and 17 T-shirts believed to infringe the Nike®, Adidas®, Tommy Hilfiger®, Prada®, Calvin Klein®, Puma®, Adidas® and Lacoste® trademarks.

Prepared by: Djurdja Krivokapić

For more information, please contact serbia@petosevic.com.

Kazakh Officials Seize Fake Luxury Watches

On October 21, 2020, Kazakh police officials in the city of Baikonur in southern Kazakhstan seized numerous luxury wristwatches believed to infringe various trademarks, including Rolex®, Daniel Wellington®, Rado®, Calvin Klein®, Hublot®, Tissot®, Apple®, Burberry® аnd Longines®.

The goods were discovered in a boutique during the raid of a shopping center.

Prepared by: Dayana Auezova

For more information, please contact kazakhstan@petosevic.com.