The Samoa Intellectual Property Act 2011 introduces new provisions on patents, innovations patents, designs, trademarks, collective marks, plant breeder's rights, geographical indications, and layout designs of integrated circuits, and comes into force on 1 October 2012.
Here are some highlights on the new legislation.
Patents, designs, and innovation patents
The new legislation removes the ability to file patent or design re-registrations in Samoa.
If you previously relied on the patent or design re-registration provisions, then in the future, you will need to make sure you file your patent and design applications in Samoa within 12 months of your first application. Samoa is not a member of the PCT Treaty or the Paris Convention. Instead, the legislation allows applicants to claim priority from applications filed in a member state of the Paris Convention provided the application is filed within 12 months.
The Act also introduces a requirement for each patent to state whether or not the invention is based on knowledge available within any local or indigenous community whether from Samoa or elsewhere.
You may also be required to supply evidence you have the right to use this knowledge. If you are unable to supply this evidence, then the application can be cancelled.
Examination and foreign applications
A patent is patentable if it is (1) new, (2) involves an inventive step, and (3) is industrially applicable.
An innovation patent is patentable if it is (1) new and (2) is industrially applicable.
A design is registrable if it is (1) new.
Each patent and design will be examined to make sure they meet these criteria. We are doubtful that the Samoan registrar will have the expertise to examine patent and design applications in every field.
There are provisions that allow the registrar to ask for information on any foreign applications, including, any objections raised against those applications.
We expect this information will be relied on to help the Samoa registrar carry out its examination responsibilities.
Duration and renewals
The duration of a standard patent is 20 years from the filing date, provided renewals are paid every 5 years.
The duration of an innovation patent is 7 years with no renewals payable.
The duration of a design is 15 years from the filing date of the design application, provided the renewals are paid every 5 years.
There is a grace period of 6 months to pay any fees.
Trademarks and collective marks
The new legislation removes the ability to file trade mark re-registrations in Samoa.
New priority provisions
Although Samoa is not a member of the Paris Convention, the legislation allows applicants to claim priority from applications filed in a member state of the Paris Convention provided the Samoan application is filed within 12 months.
Service marks available
The new legislation allows applicants to seek registration for service marks. The legislation has adopted the 9th Schedule of the Nice Classification.
Non-traditional marks available
It will be possible to register shapes, colours, sounds, scents, and taste marks in Samoa, provided these marks comply with other provisions in the Act.
The legislation provides for the registration of collective trademarks. Collective trademarks are defined as trademarks that distinguish the origin or any other common characteristic.
Duration and renewals
A trade mark registration is granted for 10 years from the filing date of the application, and is renewable for periods of 10 years.
Plant breeder's rights, geographical indications, and layout-designs of integrated circuits
The new legislation introduces provisions that allow for the protection of plant breeder's rights, geographical indications, and layout designs of integrated circuits.