New IP Act in Liberia
Liberia has consolidated its IP law in the Industrial Property Act 2014 (the Act), an act that came into force on 22 July 2016. The new law was well overdue because Liberian IP was rather disorganised. The new legislation discards the Industrial Property Act of 2003, a piece of legislation that was never formally passed by Parliament, although its provisions were followed in terms of an executive decision. The Act has also replaced Liberian copyright legislation that dates back to 1997.
The Act covers all aspects of IP law: patents; utility models; layout designs of integrated circuits; industrial designs; trade marks; trade names; geographical indications; copyright and related rights. Crucially the Act also deals with enforcement, seemingly in recognition of the fact that counterfeiting is one of the greatest problems that IP owners face in Africa right now.
Outlined below are some of the key features of the Act.
The Act establishes an IP office that is based in the capital of Liberia, Monrovia. The office is known as the Liberian Intellectual Property Office (LIPO) and it comprises two separate departments - the Copyright Department and the Industrial Property Department.
Patents are dealt with in some detail in the Act. We will discuss some of the more noteworthy provisions:
Patentability: As regards patentability, the Act says that the invention must be ‘industrially applicable, new and involve an inventive step.’
Exclusions: The Act contains the usual exclusions regarding discoveries, theories, methods of doing business, computer programmes and methods of treatment.
The Act also creates an exclusion regarding ‘products of nature and substances obtained or extracted from nature, even if purified or otherwise isolated from nature.’ It goes on to say that ‘this exclusion shall not apply to the processes of isolating those natural substances.’
Novelty: Liberia has opted for a requirement of absolute novelty, which is subject to a 12-month grace period.
Inventiveness: The Act says that in order for there to be an inventive step the invention must not have been obvious to a ‘person in the field with ordinary skill, creativity and intuition’. In addition, it says that ‘an inventive step will not exist when the invention can be directly derived from the combination of any pieces of prior art.’
Ownership: When it comes to ownership of the patent, there are provisions regarding joint inventors and employee inventors. The Act goes on to say that an invention made within one year of an employment relationship terminating shall be presumed to have been made during the employment relationship if it ’falls within the scope of the former employer’s main line of business’.
Traditional knowledge: The possible link between patents and traditional knowledge is dealt with. The Act says that where the invention ‘consists of or is directly derived from biological material or from traditional knowledge obtained from a particular community, the description shall indicate the source and origin of that material or knowledge.’
Unity of subject matter: The Act says that an application can be divided provided that no new matter is introduced.
Foreign results: The applicant for a Liberian patent is obliged to furnish LIPO with foreign search reports and rejection notices.
Term: The term of the patent is 20 years, and annual fees (annuities) are payable.
Limitations: When it comes to enforceability, the Act creates certain limitations. For example, it says that a patent cannot be used to interfere with trade in genuine goods, acts done for research or teaching, or use that is non-commercial in nature.
Compulsory licenses: Compulsory licensing is a big issue in Africa and the Act deals with compulsory licensing in considerable detail. Compulsory licenses can be granted in the following instances:
- If it is in the public interest;
- In cases where the manner of exploitation is anti-competitive;
- In cases where the patent has not been exploited for four years from the date of filing; or
- In cases where the owner refuses to grant voluntary licenses on reasonable terms.
Invalidity: Patents are granted without any guarantee regarding the novelty, inventive step or industrial applicability of the invention. There are provisions for invalidation of patents.
Patent Cooperation Treaty (PCT): There is provision for international designations under the PCT.
The provisions regarding patents apply equally to utility models.
The test for registrability, however, is that it must be ‘new and industrially applicable’, and the requirement for inventive step shall not apply.
The term is ten years rather than 20 years.
There are provisions for conversion from patents to utility models, and vice versa.
LAYOUT DESIGNS OF INTEGRATED CIRCUITS
There is specific provision in the Act for the registration of layout designs of integrated circuits. We will discuss the more important provisions.
Registrability: The Act provides that in order to be registrable a layout design must be original in the sense that it must be the result of the creator’s own intellectual effort and not commonplace amongst creators of layout designs. In addition, the layout design must not have been commercially exploited for more than two years anywhere in the world prior to the date of filing in Liberia.
Rights: Registration grants the owner the exclusive right to reproduce, import, sell or distribute for commercial purposes the layout design, or an integrated circuit incorporating the design.
Term: The term of protection for a lay out design is ten years from the date of filing or first commercial exploitation, or 15 years from the date of creation.
Industrial designs are, of course, a vital part of IP and the Act therefore makes provision for their protection. We will discuss some of the more important provisions.
Registrability: In order to be registrable the design must be new or original. The test for novelty is an absolute one (in other words worldwide novelty) with a 12-month grace period. Features that are dictated solely by technical or functional considerations are excluded from registration.
Ownership: There are various provisions regarding joint creators and designs that were created in an employment relationship.
Deferral of publication: The Act makes it possible to request deferral of publication for up to 30 months.
Division: There is provision in the Act for division of an application, but this may not involve a change in, or addition to, any of the designs contained in the initial application.
Term: The registration term for a design registration is ten years, and this can be extended for a further ten-year period.
Rights: The owner of a design registration has the exclusive right to exploit the design, as well as designs that closely resemble it. The Act does, however, specifically state that the design registration shall not impact on any copyright that exists.
The exclusive right to exploit the design includes the right to make, sell or import an article bearing the design or something that is ‘substantially a copy’ of the design, provided that such acts are done for commercial purposes.
Limitations: There are limitations to the exclusive right to exploit the design and these include: use in relation to genuine goods; acts done privately for non-commercial purposes; acts done for teaching, scientific research or experimental purposes; the reproduction of features that are dictated solely by function.
International aspects: There are provisions relating to international applications designating Liberia under the Harare Protocol.
There are lengthy provisions dealing with the protection of trade marks. For example:
Mark: The definition of ‘mark’ says that it must be ‘visually perceptible’ and that a representation of a mark may not consist of a written description. This definition does seem to exclude sounds and smells from trade mark registration.
The Act does, however, make it clear that a mark can include the shape of goods or packaging. When it comes to shapes, there are the usual exceptions regarding shapes that result from the nature of the goods, as well as any shape that ‘provides a technical effect, functional advantage or substantial value to the goods.’
Well-known marks: As is the norm these days, there is specific protection for well-known marks.
Refusals: An application can be refused on various grounds including a conflict with an earlier registered trade mark or Geographical Indication, a mark that is well known in Liberia, and an unregistered mark or copyright or industrial design.
Opposition and honest concurrent use: There is provision in the Act for opposition to trade mark applications. There is also provision for an applicant to overcome the opposition on the basis of the honest concurrent use that it has made of the mark.
Term: The registration term in Liberia is ten years.
Internet use: In recognition of the fact that trade marks are often used online, the Act specifically provides that using a trade mark on the Internet or other electronic media where such use is intended for Liberia, or has a commercial effect in Liberia, is deemed to be use of the trade mark in Liberia.
Limitations: There are various limitations on the rights of the trade mark proprietor. One of these limitations is that the proprietor of a trade mark registration cannot stop use of the trade mark on genuine goods where the packaging is not materially altered or damaged. Another limitation makes it lawful to use a registered trade mark in relation to spare parts.
Non-use: There is provision for cancellation of a trade mark registration on the basis that the trade mark has not been used for a continuous period of three years or longer.
Collective and certification marks: There is specific provision in the Act for the registration of collective marks and certification marks. Trade names: There are provisions regarding trade names, which can be protected without registration.
Licensing: Licensing of trade marks is permitted if there is effective control by the proprietor over the licensee’s use.
International Registrations: Liberia is a member of the Madrid Protocol and there are specific provisions for international registrations. These provisions deal with issues such as refusals, invalidations, replacement, transformation and extension of protection.
Seizure: The Act provides that the customs authorities in Liberia are, in terms of the customs legislation, entitled to seize that ‘all goods unlawfully bearing a trade mark or trade name.’
There is specific protection for Geographical Indications in Liberia. We will discuss some of the more important provisions.
Protection: Although there is provision for the registration of Geographical Indications, registration is not actually a requirement for protection. Registration does, however, does create a presumption that the name is a Geographical Indication.
Registration: Groups of producers or competent authorities can apply for the registration of a Geographical Indication. An application for registration is advertised for opposition purposes.
Enforcement: The owner of a Geographical Indication can sue for an injunction in the case of any unauthorised use of the name which falsely suggests a geographical origin and misleads the public. In the case of wines and spirits the owner can sue for any use of the name, even if it is in conjunction with words like ‘kind’, ‘style’ or ‘type’ and the true origin of the goods is actually indicated.
Seizure: The Act provides that the Liberian customs authorities are under Liberian customs law able to seize all goods bearing a false indication of geographical origin.
COPYRIGHT AND RELATED RIGHTS
The Act places a great deal of emphasis on copyright and related rights. We will discuss some of the more important provisions.
Works protected: The Act grants protection to a wide range of works including literary works, artistic works, musical works, dramatic works, sound recordings and computer programmes. The Act applies to works created by individuals, corporations, government and international bodies.
Exclusions: Certain works are excluded from the ambit of the Act. These include official texts, news of the day and political speeches. Rights: The rights granted to copyright owners include the right of reproduction, translation, adaptation, distribution, rental, public performance, broadcasting and other communications.
Moral rights: Moral rights are protected in Liberia.
Exceptions: There are numerous exceptions to the rights enjoyed by copyright owners. There are, for example, exceptions relating to:
- Private reproduction for personal use;
- Temporary reproduction;
- Reproduction for teaching;
- Reproduction for use in libraries and use by visually or aurally- impaired persons;
- The making of a single back-up copy of a computer programme;
- Ephemeral recordings by broadcasters; and
- Use in court proceedings.
Compulsory licences:There are compulsory licensing provisions in the Act.
Term: The term of copyright protection in Liberia is 50 years, and this runs from various dates depending on the type of work involved. It may, for example, be the date of death of the author, or the date on which the work was first made available to the public.
Authorship: There are provisions in the Act relating to joint authorship, as well as works created by employees. There are also presumptions dealing with cases where the name of author is indicated on the work.
Transactions: There are provisions relating to the assignment and licensing of copyright.
Registration: Interestingly, there is provision for the registration of copyright. There is also provision for registration of transfers of copyright. What is not clear, however, is what the effect of registration is, in other words whether it is a prerequisite to either the subsistence or enforcement of copyright. We do not believe it is, although it is hoped that this important aspect will be clarified.
Other rights: There is provision in the Act for many related rights such as performers’ rights, the rights of producers of sound recordings, equitable remuneration for use of sound recordings, the rights of broadcasting organisations, technological protection measures, the protection of rights’ management information, and the protection of traditional cultural expressions.
There is also provision for a levy payable on ‘any material used or capable of being used to infringe copyright in a work’ – this levy will be paid to LIPO, which will distribute monies collected to approved collective management organisations.
ENFORCEMENT / ANTI-COUNTERFEITING
In what is a very positive development, the Liberian authorities have seen fit to include specific infringement provisions in the Act – provisions that relate to the infringement of all the various IP rights. These sections of the Act provide for injunctions, damages, and the destruction of goods.
The Act also deals with provisional measures that are designed to preserve evidence. It says that, in exceptional circumstances where there is a real danger of evidence being destroyed, the IP owner can be granted these provisional evidence-preserving remedies without notice to the alleged infringer.
The Act also has border measures that are aimed at preventing the importation of goods bearing counterfeit marks or pirated copyright goods – these measures are in addition to the seizure measures referred to earlier under Trade marks and Geographical Indications.
These border measures provide that the owner of a right can apply to the Director General of LIPO for an order requiring the customs authority to suspend the clearance of particular goods. The customs authority must then allow the rights’ holder to inspect the goods, remove samples for examination and testing, and file court proceedings within 10 days. The rights’ holder will need to file security to cover any damages claim that the importer may bring. If the rights’ holder does not institute proceedings within 10 days, the goods are released.
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