Algeria: Abu-Ghazaleh Intellectual Property Bulletin, February 1999

3 AGIP OFFICES ACQUIRE ISO 9002 CERTIFICATES

TUNISIA:
50% INCREASE IN TRADEMARK AND PATENT OFFICIAL FEES

LEBANON:
AMENDMENTS TO THE PATENT LAW

LEBANON:
Q&A ON IP LAW AND PRACTICES

REQUIREMENTS & CHARGES WORLDWIDE NOW PUBLISHED

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The Quality Management Systems of AGIP’s Jordan Office Regional Office and International office have been assessed and registered as meeting the requirements of ISO 9002 as of January 22, 1999.

AGIP’s dedication to its loyal clientele, as well as its continuous quest for excellence, have earned it this valuable certificate.

We take this opportunity to thank you for your continued faith in our organization and assure you that we will always meet your expectations. You will hear from our other offices soon.

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On November, 1998, the President of Tunisia issued Decree no. 98-2133 which stipulated that the official fees for registration and maintenance of trademarks and patents were to be increased by 50%. The increase had been proposed by the Minister of Industry and was supported by the Minister of Finance and the Administrative Tribunal. The Decree became binding upon publication in the Official Gazette on November 10, 1998.

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A final draft amending the Patent Law in Lebanon was submitted to the Parliament last month. Highlights of the most significant changes are:

A certificate shall not be granted for financial methods and for inventions which are obviously contrary to the public order, and pharmaceutical compositions and prescriptions

The protection shall remain guaranteed through the letters-patent for 15 years starting from the filing date provided for in Article 12.

For every letters-patent the following annuity, which will gradually increase as specified below, shall be collected.

* 1 US$= 1,000 Lebanese Pounds

An application shall not be accepted unless it is accompanied by the first-year annuity at least.

Every assignment or transfer shall be in writing or else it shall be void. If it is not registered with the protection office, the assignment shall be null and void against third parties. The assignment shall be recorded in the register kept for this purpose in the office based on an application by the assignee within 3 months as of the assignment date. The recordal entry shall comprise the names and addresses of the parties, number and date of the letters-patent, and the assignment's type, date, and period.

The rights of the patentee shall lapse in the following cases:

If products similar to those which are included in his letters-patent enter Lebanon from foreign sources without prejudice to any conflicting international conventions which are applied in Lebanon.

If the patentee doesn't exploit his invention for two years unless he proves that he offered his invention directly to industrialists capable of exploiting it and that he refused without cause applications for licenses to exploit it under reasonable conditions.

A letters-patent shall not be granted for the following:

A) Financial methods.

B) Inventions which contravene with public order or morality,

C) Medical, therapeutic and diagnostic methods with the exception of the devices and apparatus which are used in applying those methods.

The exclusive right to exploit the invention subject of the patent shall extend for a period of 20 years starting from the date of settling the first annuity provided for in Article 10.

A) An annuity fee shall fall due on the first day of each year of the patent validity as follows:

B) An annuity fee settled during the six-month grace period as of the date of falling due shall be subject to a fine of Lebanese Pounds 100,000.00.

C) A patent shall lapse when the grace period provided for in paragraph B expires if the patentee does not pay the due annuity fee and the fine.

A) The patentee whose patent lapsed as per the provision of paragraph C above may apply to the Head of the Intellectual Property Department within six months of the patent lapse date requesting to restore his rights in the patent, provided that he proves that his lateness in paying the annuity fee and fine is due to a serious reason.

B) If the Department's Head accepts the said application, then the patentee shall settle the due annuity and fine in double amounts within a weak of the date of receiving the approval.

Every agreement on a patent of invention shall be in writing or else it shall be regarded as null and void, and its effect shall not be valid against third parties unless it is recorded in the patents register with the Intellectual Property Protection Department. The recordal shall be made on the basis of an application by one of the parties within 3 months of signing the agreement plus distance grace periods against a fee of Lebanese Pounds 90,000.00. A lateness fine of Lebanese Pounds 50,000.00 shall be levied for every two-month period.

In accordance with Article 5 of the Paris Convention of 1883 (as amended), natural and legal persons shall have the right, after the elapse of 3 years as of the issuance of the patent grant decision, to apply for obtaining a compulsory license to exploit the patent in Lebanon as per the following conditions if the patentee or his successor, at the time of filing the application, hasn't actually and seriously started without a reasonable excuse to exploit or to prepare for exploitation of the invention subject of the patent in Lebanon.

The application for a compulsory license shall be by a petition to the court and accompanied by what proves that the plaintiff was unable to obtain from the patentee a license to exploit the patent and that he is capable of exploiting the invention seriously and effectively. The compulsory license may not be exclusive. It shall be granted under specific terms, especially as regards its duration, scope and royalties. The patentee or the licensee may request amending the terms of the license granted through the court, if new circumstances arise and justify that.

The compulsory license may not be sublicensed to third parties except for assigning the compulsory license with the business enterprise which exploits it and in cases of merger or breaking-up of companies.

If the compulsory licensee doesn't honor the conditions specified in the court decision, the patentee or other licensees may resort to the court to obtain a cancellation decision of the compulsory license.

On the strength of a request by the Ministry of Health, and for health related reasons, the Minister of Economy and Trade may, subject to the compulsory licensing system, the patents of invention which relate to medicines, their methods of manufacture or the substances required for manufacture, if the drugs offered to the public are in short supply as to quantity or the quality of it does not meet the demand or to be unjustifiably at high cost, under a decision and as per the conditions stated below.

As soon as the decision is published, any person who meets the requirements to exploit the invention subject of the patent may apply to the Minister of Economy and Trade to grant him an unexclusive license to exploit the patent in Lebanon. The license is granted as per a decision issued by the Minister of Economy and Trade under certain conditions, particularly as to its duration and scope, with the exception of the annual royalties arising therefrom which are fixed by agreement of the two parties or else through the court. An administrative compulsory license shall be enforceable as of the date of notifying it to the patentee, licensee, Intellectual Property Office, and all the patent owners mentioned in the Patents Register.

In accordance with a request by the Minister of National Defense, the Minister of Economy and Trade may grant the state a license to exploit any patent of invention for the demands of national defense. This license shall be granted under a decision issued by the Minister of Economy and Trade which shall determine its conditions, except for the royalties arising therefrom. If it is not possible to fix the annual royalties by agreement, it can be done through the court. This license shall be enforceable as of the date of the request of the Minister of National Defense.

In accordance with a request by the Minister of National Defense, the Minister of Economy and Trade, and for the purposes of national defense, may expropriate, wholly or partially, any patent of invention under a decision which he issues and which fixes a fair compensation for the expropriation.

A) Reviewing the appeals regarding this section shall be done by the court of the first instance in Beirut whose decisions shall be subject to all types of appeal.

B) The patent owners may oppose the decision mentioned in this article within 60 days of the date of notifying them.

Allowing the protection of pharmaceutical. This makes the law in conformity with the new international conventions, especially the TRIPs Agreement.

Increasing the protection period as per the requirements of the TRIPs Agreement.

Amending the fees and increasing them in a progressive and specific manner.

The provision is a repetition of what was in Article 9. Therefore, Article 9 was cancelled and replaced by a text allowing restoration of rights in a patent for a serious reason. The new text is available in most of modern legislations.

Rewording and increasing the assignment recordal fee.

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Q. Once an application is filed, how long is it until registration (trademarks, copyrights, patents and industrial designs)?
A. In Lebanon, an application is registered automatically upon filing. Publication in the official gazette occurs later.

Q. Following registration, how long is it until publication is effected?
A. Publication in the Official Gazette takes between three to six months.

Q. How about opposition then?
A. Opposition can only take place at the Lebanese courts, not with the registrar.

Q. Can one application cover multiple classes?
A. Yes, one application can cover up to 42 classes.

Q. What is the status of the Trademark Law?
A. A committee of qualified individuals was formed and are to start amending the current trademark law in March 1999.

Q. What is the status of the Patent Law?
A. A final draft amending the Patent Law was submitted to the Lebanese parliament for official approval.

Q. What is the status of the Copyright Law?
A. A final draft amending the Copyright Law was submitted to the Lebanese parliament for official approval.

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This informative and unique publication which features filing requirements, registration fees, international conventions for over 190 countries, is essential for business people around the world. Professionals can draw on it for an overview of the latest IP developments.

Kindly contact our regional office for more information or for a free copy.

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UNITED ARAB EMIRATES:
COPYRIGHT INFRINGEMENT OF COMPUTER SOFTWARE
ABLE PUBLISHES "THE GUIDE TO ARAB BUSINESS LAWS"
NEW LICENSING AND FRANCHISING DEPARTMENT

LEBANON:
AUDI & AUDI

OMAN:
TWO-YEAR JAIL FOR COPYRIGHT VIOLATORS

ABLE ON THE WORLDWIDE WEB

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In accordance with UAE’s policy on fighting intellectual property violations, a recent judgement was issued in relation to computer software infringement.

A corporation producing computer software had filed a criminal proceeding joined with a civil claim against two individuals on the basis of copyright infringement. Evidence in support of the complaint consisted of a copy of the raid report and a document from the Dubai Ministry of Information and Culture establishing that a software sold in the defendants’ shop was pirated. The Court delivered its decision against the defendants stating that computer software is protected under the UAE Federal Copyright Law. The decision held that exploitation of an intellectual work (computer programs) through the public, in the absence of a certified written authorization from the author, is in violation to the mentioned law. The Court fined the defendants for infringing its copyrighted works and also requested publishing the judgement at the defendants’ expense. The Court, while denying the latter request for being ungrounded, ruled for enjoining the defendants from using the plaintiff’s works.

A judgement of this sort would not have become possible in the absence of adequate enforcement measures available in the Emirates. Strong bodies, such as the Ministry of Culture and Information and the Department of Economics, combine forces together with the police in pursuit of intellectual property infringements.

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"The Guide to Arab Business Laws" (1st Edition) is designed to meet the demand for easily accessible information on the various laws that form the basis for conducting business in the Middle-East.

The guide contains all the basic business laws in the Arab countries that are in continuous use. The guide will benefit all those involved in the business world, specifically chambers of commerce, ministries, central banks, commercial banks, business consultants, auditing firms, lawyers, businessmen, embassies, research departments, law colleges and post-graduates. The guide is presented in a simple format allowing quick access in locating the desired information.

The Guide to Arab Business Laws CD as well as a first year update cost US$ 200. Updates for the following years will cost US$ 75 per year.

To receive our promotional package please contact: Abu-Ghazaleh Legal Services (ABLE), pobox 921100 Amman 11192, Jordan.

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Abu-Ghazaleh Legal Services (ABLE) have recently established a new licensing and franchising department to deal with the increase in technology transfer. The purpose of the department is to provide ABLE's clients with a specialized service that will meet their needs and requirements.

The department is centered in Jordan, and serves clients in all the Arab countries through undertaking licensing, franchise and other agreements in the field of transfer of technology. It is engaged in drafting agreements, legal consultations on the compatibility of such agreements with the Arab laws along with mediation and litigation. As a member of several international associations, including the Licensing Executives Society - Arab countries, ABLE remains up-to-date with all the latest developments in franchising, licensing and technology transfer.

For more information, kindly contact Ms. Ruba Qalyoubi, Abu-Ghazaleh Legal Services , fax +962 6 568 7910

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One trademark for two companies. A conflict between the German automobile company "Audi" and the Lebanese owned bank "Audi" based in Geneva, Switzerland first started in 1994 when the automobile company began its pursuit in challenging registration of three marks in the name of Audi Bank. The bank is named after a Lebanese family owning the greater share of this bank.

The German company began its legal action by attempting to impede the bank from using such marks. The bank countered the automobile company’s action with a similar complaint. The Justice Court in Canton Geneva denied complaints of both parties grounding its decision on the fact that the bank had been existent for nearly ten years without contest by the German company. However, the Swiss Supreme Court reversed the latter judgement.

Subsequently, the German company brought an action against the Swiss bank before the Federal Court which approved the filing of the case.

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Violators of Oman's Copyright Law face two years imprisonment and or a fine not exceeding US$ 5,200. This is the strongest detterent for violators here and has widely checked rampant piracy, at least on the audio and video cassettes front.

According to the law, violation include selling, displaying, importing or exporting imitated foreign compositions.

Furthermore infringement, either by way of illegal copying, illegal quotation or falsification by printing and publication for commercial purposes, will also be penalized. Moreover discloses or facilitates the disclosure of computer programs prior to their publication, will also be punished according to the law. The penalty shall be double in case of recurrence. In all cases, the court shall adjudge the confiscation of the imitated copies as well as the materials used for such purpose. The court may also, on conviction, order closure of the enterprise used by the imitator.

The law, in general, accords a wide scope of protection. Authors of original compositions in literature, science, arts and culture, in general, shall enjoy the protection of this law irrespective of the value of those compositions, their type, manner of expression or the purpose for which

they are created. The protection shall also cover books, computer programmes, and other written material; works delivered orally such as lectures, speeches and sermons, drama works and musical plays, musical works (digital or not; accompanied by words or not), compositions relating to choreography and pantomime, cinematography, television, radio and audio-visual compositions, drawings, paintings, architectural pieces, sculptures, ornaments and engravings, applied arts (handicraft or industrial), illustrations, geographical maps, plans and sketches and formative compositions relating to geography, topography, architecture and science, folklore, and the title of the composition if it is of an innovative nature etc.

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We would like to invite all of our clients, and those interested to learn more about our firm, to visit us on the Worldwide Web. Our website provides an introduction to the services we offer along with information on how to contact our numerous offices across the Arab Countries.

Preparations are also being made to expand the website so as to include the most important information on the legal aspects of working and living in the Arab Countries.

For more information, kindly visit us at the following address : www.ABLE-LAW.com
Or contact us via email at : ABLE@ABLE-LAW.com