Seychelles - New Industrial Property Act now in effect

The Industrial Property Act 2014 (“the Act”) in the Seychelles came into effect on 1 March 2015.

On the patent front, the Act does away with provisional patents and the re-registration of UK and European (UK) patents, but it allows for PCT national phase applications and it provides for a registration term of 20 years.

As for trade marks, Convention priority can now be claimed, the initial registration term goes up from seven years to the more usual ten, and there is provision for collective marks and geographical indications.

Design protection is now possible. Functional designs are excluded and the term is five years, extendible for two further five-year periods. There is also provision for the registration of utility models and original layout designs of integrated circuits. In each case the protection term is ten years.

Below is a summary of the changes:

Trade marks

  • The Seychelles has acceded to the Paris Convention, which means that trade mark owners can claim priority.
  • Three-dimensional marks can be registered.
  • A trade mark application can be opposed by the prior user of a similar mark, provided that the opponent can show use of at least 6 months and establish a reputation. The opponent must also file its own application.
  • A trade mark registration will have an initial duration of ten years instead of seven. Subsequent renewal terms will, however, be seven years instead of 14. Trade mark registrations obtained under the existing Act must, on expiry of the term, be renewed in accordance with the new Act.
  • A trade mark registration can be attacked if it is unused for a continuous period of three years or longer. The period under the old law was five years.
  • There is provision for the registration of collective marks and geographical indications.
  • The Act regulates unfair competition in considerable detail.

Patents

  • PCT national phase applications are specifically recognised.
  • Novelty requirements are now absolute but there is a 12 month disclosure grace period for acts committed by the applicant, or acts which constitute an abuse by a third party in relation to the applicant.
  • The Act lists what is excluded from patentability, including methods of treatment of the human or animal body by surgery or therapy and diagnostic methods; schemes, rules or methods for doing business, for performing purely mental acts or for playing games; plants or animals other than microbiological processes, etc.
  • Divisional patent applications may be filed.
  • Compulsory licences are provided for.
  • The duration of a patent is now 20 years from the filing date. Extensions of term are no longer possible.
  • Annuities are payable starting one year after the filing date. A grace period of six months is provided for the late payment of annuities. Restoration of patent applications will no longer be possible.
  • Provisional patent applications will no longer be possible.
  • The re-registration of granted UK and European (UK) patents will no longer be possible.
  • Under the current Act one may amend the application before and after grant. However, under the new Act one may only amend the application prior to grant and the amendments may not go beyond the original claims as filed.

Utility models

  • Utility models are provided for, which are for minor inventions and must be novel and have industrial applicability. A six-month disclosure grace period is provided.
  • Specific exclusions to patentability of a utility model are listed.
  • A patent application may be converted into a utility model application at any time prior to grant or refusal and vice versa.
  • Duration of a utility model is ten years from the filing date.

Industrial designs

  • As of 4 January 1978, no design protection was available in the Seychelles. The Act now provides for design protection.
  • Absolute novelty is required but a six-month disclosure grace period is provided for acts committed by the applicant or an abuse committed by a third party in relation to the applicant.
  • Functional designs may not be protected.
  • Divisional design applications may be filed.
  • The design application may relate to two or more designs incorporated in products belonging to the same class in the international classification.
  • Duration of protection is five years, extendible for two further such terms of five years each. A grace period of six months is provided for the late payment of design renewal fees.

Layout designs of integrated circuits

  • The Act provides for original layout designs of integrated circuits.
  • Layout-design means the three-dimensional disposition, however expressed, of the elements of an integrated circuit, at least one of which element is active, and some or all the interconnections of an integrated circuit, or such a three dimensional disposition prepared for an integrated circuit intended for manufacture.
  • Duration of protection is ten years from the date of first commercial exploitation of the layout design anywhere in the world, or from the filing date of the layout design if the design has not previously been commercially exploited. 

Date published: 2015/03/26
Author: Spoor & Fisher

Tags: general ip news seychelles industrial property act