Parliament has adopted certain amendments and procedural changes to the Industrial Property Law, with the aim of harmonising Albanian law with EU legislation and reflecting Albania's accession to the European Patent Convention. The IP rights affected by the amendments are industrial designs, patents and trademarks.
At present, the new Industrial Property Law provides the best definition of the principle of automatic protection under copyright law for registered industrial designs. However, while registered designs are protected by both the Copyright Law and the new Industrial Property Law, the protection of unregistered designs has been removed from the Industrial Property Law, since the duration and purpose of the granted right are not clearly defined. As such, according to the Industrial Property Law, the exclusive right in a design is granted once it has been registered with the Albanian Patents and Trademarks Office (ALPTO).
The grace period for use of the design before registration has been extended to one year preceding the date of filing of the application or – if priority is claimed – the date of priority, instead of the previous six-month period, in order to abide by EU Directive 98/71/EC.
The law reflects the requirements of the Budapest Treaty with respect to the rules on the description and filing of inventions involving micro-organisms, in cases where the biological material used is unavailable to the public and may not be described in the application.
In such case the application shall be accompanied by evidence that such material has been deposited no later than the date of the patent filing at a recognised depositary authority (ie, one that meets the requirements of the Budapest Treaty).
Under the previous regime, the term for claiming priority was defined as 12 months from the filing date and any priority claim after this term was rejected. Following the recent amendments, if priority is filed after the expiry of the 12-month period, the applicant may still request restoration of its priority right and correction of the application in accordance with the terms and procedure set out in the European Patent Convention.
With respect to compulsory licensing requirements, the law provides for the possibility of compulsory licensing in favour of holders of plant variety rights that cannot exploit such varieties without infringing the rights of an existing patented plant variety.
Moreover, although Albania has been a full member of the European Patent Convention since May 1 2010, the law had not yet been amended to include the requirements of the convention, but provided only for the extension of the effects of European patents to Albania under Albania’s former agreement with the European Patent Organisation (February 1 1996 to April 30 2010). Following the recent amendments, the Industrial Property Law now sets out the rules for filing European patent applications directly through ALPTO, with the same effects as if the application had been filed directly with the European Patent Office (EPO). With regard to the rights conferred, the effects of an application for a European patent and the European patent itself are the same as those for a national patent. The law also provides the applicant with the right to convert its European patent application to a national patent application if:
- the application is considered to be withdrawn due to late submission to the EPO;
- the translation of the application was not filed within the specified period; or
- the application has been refused by the EPO following formal examination.
In lieu of the previous restrictive list of signs that could qualify as trademarks under Article 140(2), the law now includes a non-exhaustive list, provided that such signs may be graphically represented.
ALPTO may now refuse a trademark registration on absolute grounds if such sign does not constitute a trademark or is composed of a designation of origin or geographical indication with effect in Albania, as well as where a trademark application is filed later than a designation of origin or geographical indication filing and covers the same products.
For industrial designs and trademarks, the procedure for the examination of absolute grounds has changed and is now completed by ALPTO before publication of the application in the Official Bulletin. ALPTO examines the application for absolute grounds for refusal and formal requirements within the same three-month period from the date of filing. Three months after publication in the Official Bulletin, provided that no opposition has been filed, the trademark or industrial design is registered.
The law provides more detail in relation to the application, protection and refusal of collective marks. Therefore, in addition to the general grounds for refusal of trademarks, the registration of a collective mark may be refused on the grounds that the regulation governing the use of the collective mark does not stipulate all details required by law or might lead to public confusion with regard to the character or meaning of the collective mark.
The recent amendments have also introduced the concept of certification marks, which did not exist in the previous law, in order to define marks used for products that are certified by the owner of the certification mark with regard to their quality and different characteristics.
Finally, the enforcement of industrial property rights and procedures in case of IP infringement are covered in one chapter by unifying the terms and procedures for all IP rights in line with EU Directive 2004/48/EC. This simplification may lead to the more efficient enforcement of IP rights by their owners and the relevant government institutions and courts.
The amendments come into effect on July 9 2014.
This article first appeared in IAM magazine. For further information please visit www.iam-magazine.com.