Patent in IranPublished: 13 September 2016
By a view on the history of Paris Convention on protecting industrial ownership, we can notice that in order to protect a trademark in international level, by virtue of the mentioned convention, the owner of the trademark (natural person or legal entity) should lodge a number of applications in the departments of different member countries in various languages by paying different fees and within a longer period.
Patenting international trademark based on Madrid Agreement and Protocol
For this purpose, to facilitate the process of international patent and gaining the rights emerging from it, a number of member countries of Paris Convention developed International Union to protect industrial ownership in line with the mentioned convention and passed Madrid System as the instruction for international patent.
This system consists of two treaties:
Madrid Agreement of 1981 and the protocol of it passed in 1989; as well as the joint bylaw. Madrid System has currently 85 members consisting of countries and regional offices.
It should be noted that application for international patent is possible solely through industrial ownership offices of Madrid System member countries and requires initial patent in the country of origin.
What is a trademark?
A trademark is a specific sign and logo which distinguishes the gods and/or services of a natural person or legal entity. The source of trademark goes back to old time; that is, when craftsmen and artists left their specific signatures or seals on their products or art works. During these years, those marks passed their evolution path through support and registry of current trademark. This system helps consumers to select and purchase their necessary services or goods based on a specific trademark which specifies the nature and quality of that product and service.
What does trademark offer?
Trademark provides its owner with legal protection and he will have the ability to use the trademark for distinguishing its goods or services and/or allow another person to use that certain trademark against receiving certain amounts. In fact, exclusive use of the patented trademark on concerned products and services or awarding permit to another person to use are exclusive right of the trademark owner.
The protection period of the trademark is ten years and this period can be extended for unlimited period frequently by paying the expenses stipulated in the regulations.
From a vaster viewpoint, protecting trademark due to the fame and financial benefits encourages owners of those rights to take more innovative and braver attempts in world. In addition, preventing illegal and unfair competitions including forgery of similar trademark for the product and/or low quality and poor services. Protecting trademarks is carried out by the court as far as most judiciary systems, courts are able to prevent violations of trademark.
In a more general concept, trademark leads to promoting innovation in act and entrepreneurship through recognizing specific goods or services and leading to financial benefits in global level. Protecting the trademark prevents unfair business competitions in form of producing fake goods and using specific trademarks for selling low quality product. This system helps individuals that own skills and capital to produce and sell their goods and services in a more justified and fair methods which in turn, facilitates international business.
The trademark protection system provides people with sufficient skills and experiences with the opportunity to produce and market their goods and services in the fairest conditions and in this way, facilitates international trades for them. In addition, it creates confidence in customers in determining the rights emerging from their choice.
What kind of trademarks can be patented?
The number of patentable trademarks is almost infinite and according to the laws passed in many countries, the trademark could consist of one or few words, letters or numbers. In addition, trademark could be extracted and taken from figure, symbol, and tri-dimensional figures, sound symbols such as music sounds, scent, fragrance and color that contain significant characteristics. Trademark can include word, letter, number or a combination. In addition to the trademarks that determine the trades’ origin of cargoes or services, there are few other sets of marks as well:
Collective marks are those marks that belong to a complex or associations and the members present themselves in quality level or other sets of specifications needed by that complex or association. For example, one may recall associations or centers that represent a specific group of notary public, accountants, engineers or architects.
Certification of specific marks are trademarks that are awarded to the producer or service providers against their performance and following a series of defined standards. This trademark could be awarded to anyone who can confirm his product is produced by following the method which is determined by the given standards. As an example, one may name ISO9000 quality standard which is very well known in world.
How is a trademark patented?
To lodge application for international patenting of trademark in other countries, first, the given trademark shall be patented in the country of origin. Therefore, local patent of trademark in the country of origin is the pre-requisite of international patent of the trademark in Madrid System member countries. Lodging application for international patent of trademark is possible only via industrial Ownership Department.
The first step in this process is to fill the declaration letter of the trademark at Industrial Ownership Department which has the duty of patenting the trademark. This application form shall include the details and specifications of the requested trademark such as color, form and other specifications of the mentioned trademark. This application form should also include the list of cargoes or relevant services according to the international classification of the trademark which includes their requested trademark.
More information on the necessary documents for patenting a trademark and the method of complete declaration application is available in the portal.
A trademark should be specific and distinguished so the consumer upon noticing that trademark would identify the product and can distinguish it from other trademarks and other products which are introduced by that trademark. A trademark shall not be deceiving or misleading and/or put public order in danger or jeopardize good intention and morality.
The rights which are awarded to a trademark do not necessarily the same rights awarded to another trademark. This matter is determined through studies carried out by Trademark Department and/or the consequences of third parties’ claims on similar rights.
What is the extent of trademark protection?
Almost all countries of world register and protect trademarks. Any national or regional office of patent keeps a complex of registered and patented information that includes full information requested for the entire registered marks, the extended patents, searches and objections by third parties; however, the effect of patenting that trademark is limited to concerned country or a given territory.
To withdraw from patenting of trademark separately in each national or regional trademark patent organization, the World Intellectual Property Organization (WIPO) has developed a system for international patenting of trademark. Any person who in a way is related to a country party to the contract or to one or two treaties (in term of nature, accommodation and/or establishment place of industrial or trades firm) can benefit from the advantages of international patent the effects of which cover all or some other countries that are a member of Madrid System. Currently 85 countries are members of Madrid System and the applicants of international patents can apply for patenting their trademarks as follows via Madrid System.
Definition of invention
Article 26 of Inventions and Trademarks Patent Law passed in July 1931 instead of providing definition, endorses cases as definition and rules: Any types of new exploration or invention in various industrial or agricultural branches gives the inventor an exclusive right to use his discovery or invention provided the discovery or invention has been already registered at Tehran Registration Office. The written paper which is given by the Registration Department of Tehran is called Patent. Invention is the product of mental creativity of mankind. It can be said invention is the new solution for technical problems of the population. Article 27 of the aforementioned law rules, any person who claims any of these apply for patents:
Innovation of any new industrial product
Discovering of any new tool or performance of existing tools in new way to attain a result, produce industrial or agricultural equipment.
In doctor Jafari Langroudi’s law terminology invention has been defined as
The term invention means creating a novel thing; therefore, when a person uses his ideas in industry [the word industry is used due to its popularity and universality and it can be attributed to all products which have been developed without any past history] to create a new process or phenomena, with novelist and freshness, he will deserve to benefit from its patent and claim protection. The same is true when an individual discovers a new tool. In law terminology, the word discovery is defined as revealing, showing something which was concealed and hidden, or using equipment which already existed but is utilized in a new way for achieving a new result.
Therefore, legislator did not plan to create a restriction for creating a new result of old products and for this purpose, it encourages people to rely on their thought and opinion, and contemplate and reason in various grounds to reach new results. Thinkers and those with creative ideas can find new results by making trivial changes in the existing or old equipment. In which case, in addition to safeguarding the rights of existing equipment inventors, the innovation will be protected as well.
Presenting a universal and overall definition of invention is very difficult; however, it can be explained briefly as, making a potential idea into a reality or exercising a new idea on the existing equipment, or making changes and conversion on the existing devices to achieve a new result are considered as invention and the inventor is entitled to ask legislator to patent his invention and receive protection. According to article 29 of Inventions and Trademarks Patent Law, a person who has applied for patent in his name will be recognized as inventor and after issuing patent, he will undergo legislator’s protection.
Any inventions in science, industry and agriculture which are for improving and promoting living status of population and are brand new could be patented as invention. On the other hand, based on the order of article 28 of the Inventions and Trademarks Patent Law, financial plans are not accepted as patentable. In addition, to safeguard people’s right and eliminating certain person(s)’ domination over drugs and health affairs, the law has set bans for patenting drug formulas and arrangements; and to defend social values, it does not patent any invention or supplementary invention that disorder public order, public decency, good intention of society or jeopardizing public welfare; or the claims that are in conflict with the holy Sharia. For example, if a person invents a tool to accelerate and facilitate breaking into people’s house, such invention is in essence against public order and can not be patented.
Validity date of the patent:
Any person who has registered and patented his invention at the Industrial Ownership Department in accordance with the Inventions and Trademarks Patent Law of July 1931 and has received patent, his invention will be protected by law, at the inventor’s request, for 10 or 15 years, and maximum 20 years. During this period, the inventor, by observing legal terms will by authorized to make any legal use by observing legal provisions. After expiry of the legal protection, this period can not be extended even at the request of the inventor; and the benefits of the invention will no longer belong to a specific person; rather, it will belong to the whole population and any person can use the technical knowledge of that invention free of charge without making any payments to the inventor.
Methods of invention patent in Iran and world
A: Declarative method
B: Research method
Declarative method: Patent in declarative method will be based on inventor’s claim. In this case, the inventor’s claim is considered as accurate and provided there have been no records of such claim, it is registered. Article 36 of Inventions and Trademarks Patent Law stipulates that the invention patent is not a document in certifying the invention is usable, new or real. Furthermore, the patent by no means is an attribute that the applicant or his principal/client is the real inventor and/or the invention description or its drawings and blueprints are correct; and beneficiaries can file petitions on those matters in the primary courts of Tehran and prove the otherwise.
With respect to the aforementioned article, the patent method in Iran is declarative method. The inventor shall present to the Industrial Ownership Department the doucments on his claims on invention, and the Industrial Ownership Department, studies the inventor’s claim in its registration records; and will issue the patent in inventor’s name. In such cases, the Industrial Ownership Department which has the responsibility of patent issuance has no responsibility regarding the accuracy or falsehood of the inventor’s invention; rather, it is the inventor who has personal responsibility. If any person has any claims on the registered invention, he should file petitions in judiciary courts in Tehran versus the inventor- as the defendant. The results of the proceeding and issuance of final verdict will clear the real matter.
In addition, if by virtue of article 37 of Inventions and Trademarks Patent Law, in the event that:
A: The invention is not new;
B: If the invention patent which has been issued for financial drawings and inventions are against public order, formulas and drugs ingredients;
C: If the invention is pure scientific with no practical use in industry or agriculture.
D: If five years have already passed from the patent issuance and no practical use had been made.
In such conditions, any beneficiary may refer to concerned judiciary offices with jurisdiction in Tehran and apply for the issuance of patent invalidation order from Industrial Ownership Department. With respect to the aforementioned circumstances, the invention patent method in Iran is declarative and any claims will be filed in judiciary courts and will undergo judiciary proceeding and hearing.
Research methodology: In some countries, by benefitting from different equipment, facilities and labs in various areas the quality of the inventor’s invention is studied and the tests take a long time to study the inventor’s claim on his invention and its true or false nature is proved.
In this system, it is tried to keep the invention confidential before registry and consider a priority for the applicant. If the inventor’s claim is specified is found accurate, the registration of the patent will start on the application date and if the inventor’s claim is not true, his invention is rejected. In some countries, both methods are used. For example, in Switzerland, research methods are carried for watches and drugs and another research method is used by proceeding with the declared method. Benefitting from the declared and research methods have some advantages and disadvantages which are beyond this paper. The certain matter is the legislator of any country adopts one of the two methods mentioned above proportion to its own standards and best interests and rules its specific regulations indispensable for all.
Invention paper (certificate of invention or patent)
When an invention is registered at the Industrial Ownership Department according to the Inventions and Trademarks Patent Law, a written paper which is submitted to the applicant or his legal representative by the mentioned department on invention registry is called invention patent or invention registry certificate; which provides a right for the owner by virtue of law. The patent is not a certificate on the usefulness, novelty or reality of the invention. Furthermore, the patent does not serve as a document that the applicant or his principal is the actual inventor and/or the invention description or its blueprints are proper and correct. Article 40 of the aforementioned law stipulates: Any transaction of patent must be through notarized document and should be registered in patents office as well. According to article 43 of the aforementioned law should register any change in his invention in his patent.
Lodging petition for invalidation of patent document (paper):
The patent paper serves as a proof for the invention registry and is issued at the Industrial Ownership Department. As mentioned before, the patent does not serve as a document for usefulness of the invention and/or its being new or true. The patent certificate only is an attribution that the claimed invention has been registered without having any registration records; and if there will be any claims against the inventor or his invention, the case shall be decided and heard in courts.
Article 46: Inventions and Trademarks Patent Law stipulates:
The courts in Tehran have jurisdiction on investigating the legal or penal claims on the invention or trademark. Although, in penal claims, the offence had been taken place or discovered outside Tehran or the charged person had been arrested outside Tehran. In such cases, the preliminary investigations have been already made in the offence place or detention place of the charged person, and the case is referred to courts of Tehran for due proceeding. Therefore, the legislator had deemed it right in the claims related to the invention or trademarks, the courts of Tehran will investigate the matter. If; however, the offence is taken place outside the jurisdiction zone of Tehran, and/or the charged person is arrested outside Tehran, and the preliminary investigation has been already carried out by local judicial officials, the file will be sent to Tehran for final investigation and order issuance. General Department for the Registration of Corporations and Industrial Ownership, based on note to article one of the Amendment of Corporations Registration Bylaw, passed in September 1961 has dedicated a special branch at the Office of Tehran City Court for the implementation of provisions of articles 6 and 7 of the Inventions and Trademarks Patent Law. The manager of the mentioned office will decide on the acceptance or rejection of the application letters for the registration of trade corporations, non-trade establishments, trademarks and inventions; and will sign these registration certificates. Article 7 of Inventions and Trademarks Patent Law stipulates if the registration and patent application is rejected, the reasons of rejection shall be mentioned specifically. The applicant will have 10 days deadline to lodge complaint to the Head of First Preliminary Court for protesting the rejection decision.
Therefore, if the invention patent is rejected by the Department of Industrial Ownership, or there will be some circumstances after registry process, the period for filing petition on the first case is ten days after notifying the rejection opinion of industrial ownership office and for the second case, immediately upon being informed on the matter, case should be filed in judiciary courts of Tehran.
Based on article 37 of Inventions and Trademarks Patent Law of 1931, in following instances, any beneficiary can refer to the courts of Tehran and apply for the issuance of an order for invalidation of patent.
A: If the invention is not new and the patent is issued for it by the Industrial Ownership Department. In such case, any beneficiary of this can request for the issuance of patent invalidation order on the ground the invention is not new, after proving this claim.
B: If the invention is related to pure scientific procedures and practically will have no use in the industry and agriculture. In such case, any beneficiary may file a case and request patent invalidation order.
C: If the patent has been issued for more than five years and no practical use has been made on it. In such case, any beneficiary may refer to the judiciary office with jurisdiction and by proving this claim, request for the issuance of an order on invalidation of the registered patent.
D: On the subject of inventions that can be patented, the order in article 28 of Inventions and Trademarks Patent Law has been registered. Thus, if an invention is registered against article 28, any beneficiary may refer to the judiciary offices; file a petition and request for the issuance of an order for invalidation of patent.
Transfer of rights emerged or gained from patent
Transferring the rights gained from invention is in two forms of optional transfer or transfer by provisions of law.
A: Optional transfer: Any person whose invention has been registered in Iran by meeting legal formalities and has received patent will be allowed to transfer the object or the benefits of the patent to other persons by following the terms stipulated in the law.
Article 40 of Inventions and Trademarks Patent Law rules that any transaction of patent should be through notarized doucments and must have been registered in patent office. Any transfer or permission to use the invention should be signed in notary public, the notarized document should be presented to the Industrial Ownership Office and the application for registry of transfers or any other assignment must be submitted to the office.
B: Transfer by order of law: In the event of inventor’s decease, the legal heirs should receive probate from concerned officials and present the probate to the Industrial Ownership Department for the registry of its contents (based on inheritance law or the will of the deceased) to have the matter registered in patent office.
The right to refer to the invention patents: After registering the invention in applicant’s name and issuance of patent certificate, the notice of patent will be printed in official gazette. After that, any person can refer to the industrial ownership office and make a request in writing to see the doucments, papers and drawings of the registered invention. The head of the industrial ownership office, while issuing the order for the registration of the request will give permission for checking the registered invention in presence of one of the clerks of the office. If the applicant needs a certified copy of the documents and invention blueprints, he should send a written request, and by payment of governmental fee by the applicant, copies are prepared by the office and are handed over to the applicant against a receipt. Article 42 of Inventions and Trademarks Patent Law rules that there is no restriction in checking the doucments and papers of any invention patent after the issuance of the patent and any person can request to receive a certified copy of the doucments of the invention or transactions of it by paying the fee which is set forth by the bylaw.
Requirement of registering any changes in the patented invention
Any changes in the invention should be registered according to the regulations and by paying the legal fee at the Industrial Ownership Department. The notice of changes will be printed in the official gazette. Any changes, addition or completion of the invention during the validity of patent should follow the formalities by submitting a declaration letter accompanied by a detailed description and invention blueprints, and, the supplementary invention paper will be issued. The supplementary invention certificates follow the same laws, regulations and validity date as the original invention certificate.
Any changes in the name, address, and nationality of the inventor must be registered.
If the changes on original invention, owner, name, address, and nationality of the inventor are not registered, those changes will not have the validity to be attributed to or used as pieces of evidence in courts and judiciary offices.
Documents for patent application
According to articles 22 and 23 of executive bylaw of Inventions and Trademarks Patent Law, the applicant must prepare following doucments and submit them to the Industrial Ownership office:
Three copies of invention declaration letter
Declaration letter of invention is in a special format and is issued in bonds template. The applicant shall prepare the application forms in bonds sale office in General Department of Corporations Registry, complete the form by following the sample provided to him and sign each pages.
A detailed description of the invention or new tool which is presented for patent should be prepared in three copies. The invention claimed by the inventor should be described in full. The invention description shall contain all aspects of the invention claims clearly. It is recommended to use A4 papers in preparing invention description.
Invention drawings or blueprints in three copies
The full blueprint of the invention should be prepared by using ink and in metric system measurement. The blueprints or drawings must be signed and sealed by the applicant or his legal representative. According to article 27 of executive bylaw of Inventions and Trademarks Patent Law the description of invention must be drawn on piece of paper in 24cm length and 22cm width. In addition, only one side of the paper must be used.
If the application is submitted to the Industrial Ownership Office by the applicant’s legal representative, the original power of attorney, its certified copy or duplicate must be attached to the declaration letter.
If the patent application is presented by a registered company, the official gazette containing the name and information of company’s management must be attached to the document and submitted to the Industrial Ownership Department.
Copy of birth certificate(s) of the inventor(s)
Bank payment receipt for patent application declaration registration fee.
Procedure of reviewing patent application
Each of the three documents which were demanded (one page declaration containing description of patents and the explanations with page numbers, one series of invention blueprints in any pages the applicant desires) should be punched separately and should be presented to industrial ownership office. The clerk will make the initial review of doucments and issues the registration fee payment order for patent declaration. The fee will be paid in the branch of Bank Melli in Registration of Deeds and Properties Organization and the bank receipt is attached to the documents and the set of documents are submitted to the Industrial Ownership Office. The mentioned office, after receiving the invention declaration, checks the process of preliminary formalities and after entering the particulars of the inventor and specifications of the invention in the declaration letter book, files the second copy, containing the same specifications as the original copy, seal it with hour stamp that contains the hour, day, month and year of receipt and returns a copy to the applicant. The other copy is filed in the declaration letters records and a third copy is sent to the expert for due review. The expert studies the invention in terms of registration records and if no records of such patent are found, he orders for invention patent fee. The invention applicant or his legal representative pay that fee in Bank Melli branch stationed in Registration Organization, attach the receipt with an invention patent which has been bought in bonds sale office in General Department for Corporations Registry and deliver them to the Industrial Ownership Office along with a copy of it. The invention patent is prepared in form of a notice and is presented to the applicant or his legal representative to be printed in official gazette. After publication of the Official Gazette containing the notice, a copy of the gazette is presented to the office, the patent certificate is completed by that office and a copy of the description and invention blueprints are attached, sealed by strings and after being signed by the Director General of Department for the Registration of Corporations and Industrial Ownership, it is sealed by the department and is submitted to the applicant or his legal representative.
If the invention fails in receiving the approval of industrial ownership office, that office will reject the invention declaration and the declaration letter rejection will be notified to the applicant or his legal representative in writing. The applicant or his legal representative will have the opportunity to file a petition and complaint versus the decision of industrial ownership office within ten days from the declaration letter rejection notification and if he does not file his petition within then days from notification of industrial office registration decision, his claim will not be heard in judiciary offices.
Patent is a document which is awarded to the inventor for exclusive utilization and use of invention for a limited period in order to prevent his competitors in using his invention for production and sale of their own products.
The exclusive right of invention is recognized and protected by law if the invention has been already patented in accordance with the regulations; otherwise, using the unpatented invention by others will have no bans and any person can use it for his own products.
Article 26 of the Inventions and Trademarks Patent Law rules: Any types of new discoveries or inventions in various industrial or agricultural fields provide the discoverer or the inventor with exclusive right to use his discovery or invention in the template of the regulations of this law, provided that the discovery or invention has been already patented in Tehran Registration of Documents in view of the provisions of the law. The written document presented by Tehran Registration of Document is called Invention Patent.
According to article 33 of Inventions and Trademarks Patent Law, the validity date of patent is 10, 15 and maximum 20 years and the period must be explicitly printed in the patent. In such case, the inventor or his legal substitute will benefit from the exclusive right of building or selling the performance or using the invention. In Iranian law, unlike French Law, the registration office patents the invention claim by mere claim of the inventor and it is not required for that office to make any researches on the claim.
Article 27 of Inventions and Trademarks Patent Law rules: Any person who has claims over one of these can apply for the patent award:
Inventing any new industrial product
Discovery of any new tools or functions of the existing tools by adopting new ways to gain an industrial or agricultural product.
Article 36 of the same law on the declarative aspect of the patent and no need to study the accuracy of the inventor’s claim rules: The invention patent does not serve as a document on usability or the novelty or reality of the invention, nor the mentioned patent imply the applicant or his client is the real inventor, or the invention descriptions and blueprints are correct. The beneficiaries can litigate in the primary court of Tehran (present public court) and prove otherwise.
It can be observed the mentioned subjects have invalidated the Iranian patents in any terms and just gives a right to the harmed person to object the patent or discovery and request for the invalidation and compensation of the loss incurred by the actor’s attempt.