LIBERIA - The Industrial Property Act 2003
Question of Status and a Summary
The above-titled measure, described as an Act, was published on 30 April 2003 by the Ministry of Foreign Affairs which has charge of such matters. That connection, between international relationships and intellectual property, illustrates the Liberian Government’s consciousness of its treaty obligations in this area.
The 2003 text became available at WIPO’s site on 18 March 2009. Indications that the Act is not yet in legal effect include:-
- Blank spaces for its date of entry into force and for the existing laws to be repealed:
- Uncertainty whether certain functions vest in the Director General, the Court or some other body:
- Absence of official notice of implementation, regulations or prescribed fees.
However, intensive consultations recently took place amongst officials, practitioners and a specialist adviser seconded by WIPO. Moreover there have been suggestions that possibly parts of the Act are being, or about to be, observed in practice.
Therefore we are intensifying inquiries about the precise position in law and in fact and we take this opportunity to summarise the new law as appearing in the published text. It provides for registration/grant of patents, industrial designs and marks. The preamble mentions other industrial properties, except copyright but specific references to other IP rights are limited, as mentioned below.
Turning to details:-
1.1 The new law specifically recognises the Paris Convention. Liberia has been a member since 27 August 1994. The current law, codified in 1972, made provisions for foreign patent reciprocity which permitted convention priority claims to be recognised since accession.
1.2 It provides for PCT applications and the prosecution thereof. Liberia also joined the PCT in 1994, since when national phase PCT applications have been accepted and processed de facto. This practice is legitimised by the Act for future applications but transitional measures are not yet clear.
1.3 ARIPO patent applications are provided for. However, Liberia has not joined that organisation and Liberia cannot yet be designated in an ARIPO patent application.
1.4 The definition of invention has been changed and the law now has specific exclusions from patentability which include:
a) Discoveries, scientific theories and mathematical methods;
b) Schemes, rules or methods for doing business, performing purely mental acts or playing games;
c) Methods for the treatment of the human or animal body by surgery or therapy, as well as diagnostic methods practiced on the human or animal body: this provision does not apply to products for use in any of these methods.
1.5 The 1972 law had local novelty provisions whereas the new law has Absolute Novelty requirements.
1.6 Divisional patent applications may now be filed.
1.7 The Director General may request information concerning corresponding foreign applications, for example search or examination results.
1.8 The new law provides for substantive examination but this is at the discretion of the Director General and is on an application by application basis.
1.9 Amendments and/or corrections of patent applications are specifically provided for.
1.10 The term of patent registration remains at 20 years. Annuities are officially payable on all patent registrations and applications; previously they were levied, in practice, only on PCT cases. The transitional provisions provide for patents granted under the old law to remain in force subject to payment of annual maintenance fees.
1.11 Contractual licences are obviously contemplated. Compulsory licences for non-exploitation of the invention are provided for. Under the old law non-use of the invention led to abandonment of the patent to the public.
1.12 Revocation of a patent by any interested person is now possible.
2.1 Previously it was not possible to get design protection in Liberia but we are pleased to advise that the new Act specifically provides for industrial designs.
2.2 International classification in terms of the Locarno Agreement is recognised.
2.3 Absolute novelty is required and convention priority may be claimed.
2.4 The term of protection is 5 years, extendible for two further such terms.
2.5 Contractual licences of industrial designs are obviously contemplated. There are no compulsory licences.
2.6 ARIPO design applications are provided for but Liberia’s lack of status in ARIPO means that the provision has no effect right now.
3.1 Trade marks and service marks continue to be recognised and provision is now made for collective marks. The definition of a mark and criteria for registrability are harmonised with WIPO/TRIPS standards.
3.2 The International (Nice) Classification and claims to Paris convention priority are formally recognised, as they have been in practice.
3.3 ARIPO trade mark registrations are provided for but Liberia’s lack of status in that organisation makes those provisions ineffective for the time being.
3.4 International (Madrid) trade mark registrations:-
a) Liberia has been a party to the Madrid Agreement since 1995. The Industrial Property Office has been recording Madrid trade mark registrations, designating Liberia and forwarded to it by the International Bureau but in the absence of corresponding amendments to the 1972 law, we advised that the enforceability of those registrations was doubtful. See the article on this site dated 25 August 2008, Madrid Trademarks - The View from Africa and Surrounding Islands.
b) The new Act recognises the Madrid system implicitly, in that international treaties to which Liberia is a party shall apply to matters dealt with by this Act and, in case of conflict with provisions of this Act, shall prevail over the latter.
c) There are currently no details of how Madrid marks shall be dealt with nationally but a final version of the Act and/or the Regulations, still awaited, may clarify the issue.
3.5 The Act requires accepted applications to be published and permits oppositions. Some details remain to be prescribed.
3.6 The term of registration of a mark is 10 years, renewable for like periods, instead of 15 years under the old law. The transitional section states that subsisting registrations remain in force but shall … be deemed to have been registered under [the new] Act. That may be interpreted to shorten 15-year terms which are now running and we must hope that a final version of the Act and/or the Regulations, still awaited, may clarify that issue.
3.7 “Exhaustion” - The rights conferred by registration … shall not extend to acts in respect of articles which have been put on the market in Liberia by the registered owner or with his consent.
3.8 Application may be made for invalidation of a registration on the grounds that the mark is not registrable or for removal on the ground of three years’ non-use.
3.9 Contractual licences may be granted of marks other than collective marks and they must provide for quality control.
Licence contracts concerning patents, industrial designs or marks, including pending applications, must be submitted to the Office which will record and publish references to them but keep the contents confidential. They shall have no effect against third parties until so submitted.
5. Other rights: Remedies
5.1 Trade names are protected without having to be registered.
5.2 Act of unfair competition including particular acts described in the Act are declared to be unlawful.
5.3 Civil remedies available from the Circuit Court include injunctions and damages. Infringements and unlawful acts, knowingly committed, are also offences punishable by fine or imprisonment.
5.4 There are no provisions for border measures.
We believe it would be premature to file for protection under the 2003 provisions described above. As already mentioned, inquiries are in progress and results will be published on our web-site. Questions arising meanwhile will be welcomed by your usual contact or by e-mailing email@example.com
Spoor • Fisher
Spoor • Fisher