RPmacau - Articles


IP Profiles 2002 -
Intellectual Property in Macau

With Macau SAR being a fairly small territory and relatively unknown outside of SE Asia, it was decided that the opening of this article should contain a brief introduction.

Macau became Chinaís second Special Administrative Region on the 20th December 1999. In accordance with Macauís Basic Law its capitalist system will remain in place for at least 50 years. Under the principal of One Country Two Systemsí the Basic Law also guarantees that Macau SAR will have a high degree of autonomy, and executive, legislative and independent judicial power as well as that of final adjudication.

Macau SAR is situated on the west bank of the Pearl River Delta and forms a triangle with Hong Kong and Guangzhou, which is the fastest growing economic area in the region.

An independent tariff region, a founder member of the World Trade Organisation and an associate member of the Economic and Social Commission for Asia and Pacific, Macau has also signed trade and co-operation agreements with the European Union. Therefore establishing itself as a strong member of the International business community.

As a separate customs territory and adopting free port policies Macau SAR will continue to develop economic and trade relationships with complete autonomy. Macau SAR has an autonomous Industrial Property rights legal system, which complies with the provisions of the TRIPS Agreement, ensuring that effective and adequate procedures are taken to enforce these rights.

LEGISLATION FOR THE PROTECTION OF INTELLECTUAL PROPERTY RIGHTS

Decree Law No. 43/99/M for the Copyright Code became law on 1 October 1999. Followed by Decree Law No. 97/99/M for the Industrial Property Legal Code which came into force on 6 June 2000. These Statutes replace and revoke all previous legislation on Industrial Property matters as well as removing the jurisdiction of the Portuguese Institute of Industrial Property.

The 1891 Madrid Agreement concerning the registration of Marks and the 1989 Protocol relating to the Agreement are not applicable in Macau, neither is the 1970 Washington Patent Cooperation Treaty.

Macau's classification of goods and services for the purposes of registration of marks follows the Fourth Edition of the Nice Agreement.

Although the extension of European patents has been enacted it is not yet in force.

Due to the limitations of space we are unable to go discuss the appellation of origin and geographical indications, the topographies of semi-conductor products, names and emblems of establishments or awards. The same goes for intellectual property infringement and unfair competition.

We have therefore provided below a brief synopsis of the Intellectual Property Right Laws for marks, patents, utility models, designs and models.

MARK PROTECTION

Legal Definition


The law recognises as a mark a sign or group of signs which are capable of being represented graphically. Namely words, including personal names, designs, letters, numerals, sounds, the shape of the product or its packaging, and which are capable of distinguishing the products or services of one company from those of other companies.


Types of Marks


Trade and service marks, as well as collective marks such as association and certification marks.


Limitations to Legal Protection

Legal protection will not be granted to:


Signs or indications consisting exclusively of the shape of the product itself or of the constituents from which the final product is made. Signs or indications which are commonly used to designate the geographical origin, kind, quality, quantity, shape of the goods and services or that have became usual and frequently used in commercial language. Colours also cannot be registered per se unless combined in ways or used in graphics or words which create a sense of distinctiveness in the mark of the goods or services

Registration will also be refused if the mark contains any signs or words falling under one of the following prohibitive items:

A mark confusingly similar (reproduction, imitation or translation) to a mark which is well known in Macau, that, when applied to identical or similar products or services of the same classification, mislead the consumer in establishing a connection with the well.known mark.
A mark confusingly similar (reproduction, imitation or translation) to a previously registered prestigious mark, which although designated for products or services not identical or similar, can provide unfair advantage to the similar mark and damage the reputation of the current mark.


Preliminary Formal Examination


Within one month of the application being filed, the I. P. Office will commence a formal examination to verify that:

The application form is completed correctly. All documents and elements required are filed with the application form and that goods and services are correctly classified.

If the application is short of any of the required documents, or if goods and services are wrongly classified, the applicant must take the necessary measures in order to rectify irregularities or the relevant late.filed documents within a period of two months after being notified by the I. P. Office; otherwise the registration petition will be refused and the refusal be published in the Official Gazette.


Official Publication


Once the application is considered to be properly completed, the I. P. Office will publish the preliminary
Within a period of two months after the publication any interested party may oppose the application. The applicant will be given a month to answer the opposition claim. These periods are not extendable.


Substantive Examination


In this phase of the registration process, the I. P. Office will conduct a search for conflicting registered marks. In essence, the examination conducted upon the mark in question consists of verifying if the conditions of mark registration are fulfilled, namely:

The distinctive character, confusing similarity in signs, non-prohibited signs, and the veracity of the mark. A thorough examination is also carried out to prevent any possible confusion of Portuguese, Chinese, English or other characters and sounds, or any other conflicting factors, with a previously registered mark.


Appeal Procedures


Any interested party dissatisfied with the final decision of the I. P. Office may lodge an appeal at the Court of the First Instance. The appeal must be lodged within one month after the I. P. Office decision has been published in the Official Gazette. This period is not extendable.


Validity


The registration is valid for a period of seven years from the granting date which is renewable indefinitely for the same period. The owner of a registered mark will benefit from the legal presumption of its novelty, distinctiveness and veracity.


Use of the Mark


If the mark is not seriously used for a continuous three year period the registration may be forfeited and subject to revocation.

PATENT PROTECTION


Legal Definition


Any invention in any area of technology pertaining to products or processes to obtain a product, substances or compositions, even if they involve a product composed of or containing biological matter or any process that permits the production, treatment or use of biological matter as long as the inventions are novel, involve an inventive step and are able to be applied to industry.


Limitations of Patentability


An invention will not be considered for patenting if it is a scientific theory or mathematical method. If the materials or substances used in the invention are found naturally or are nuclear matter. Any projects, rules or procedures for playing games or performing business, computer programs and mental acts, which all involve the presentation of material. Also if the invention is such that its use would be illegal, contrary to public order, health or morals.

Likewise an invention that involves surgical of therapeutic treatment and diagnosis of human or animal bodies or biological processes used to produce breeds of animal or varieties of plants. Neither can the discovery of gene sequences, human cloning or genetic modification processes for commercial purposes.


Biological processes, biological matter and bio-technical inventions


Any biological process for obtaining plant or animal matter is understood to be any procedure that involves crossing or selection from a natural phenomena. Biological matter is understood to contain genetic information that in a biological system can be duplicated or reproduce itself. Microbiological manipulation or anything that produces microbiological material will be understood as a microbiological process.


Non-opposable Disclosures


Any disclosures to scientific societies, technical associations, participation in universally recognised competitions, exhibitions or trade fairs will not influence the innovation of the invention as long as the application for the granting of the patent is filed in Macau within a year. Neither will any revelations resulting from the any abuse of the inventor or his successor.

Unity of request, invention and divisible applications


Only one patent may be applied for per application and invention. Numerous inter-related inventions that make up a single inventive idea will be considered as a single invention. An independent claim for a product or process that has been especially developed for manufacture may be included in the same request in the same way that device or mechanism developed for the manufacturing process or to carry out the process may also be considered as a single invention.


If however the patent registration request does not meet the requirement of unity of invention the applicant can divide the application to obtain the granting of the original request.


Multiple priorities can be applied for a patent request and may be cited for the same claim although the priorities come from different countries or territories.


Validity


The patent is valid for a period of 20 years from the date of application. The patent allows the owner the exclusive right to exploit the invention. The rights granted by the patent may not exceed the scope defined for the claims and the patent shall be granted with no guarantee as to the accuracy of the descriptions and its validity may not be presumed by virtue of the fact that the respective certificate was granted.


Complementary Certificate for the protection of medicines and phyto-pharmaceutical products


A complementary certificate for the protection of medicines and phyto-pharmaceutical products by law gives the right to the owner of an invention patent to extend their protection for a period of not more than seven years. The application must be attached to a copy of the first authorisation to place the product on the market in Macau. A summary of the characteristics of the product must also be included.


UTILITY MODEL PROTECTION


Legal Definition


Utility model provides protection to inventions that alter the configuration, structure, mechanism or arrangement that increases usage or improves the output.


The applicant has the option to apply for a patent for an invention or utility model either successively or simultaneously.


The utility model will cease to be effective once an invention patent has been granted.


Validity


The utility model is valid for a period of six years from the date of application renewable every two years for a maximum of 10 years.


DESIGN AND MODEL PROTECTION


Legal Definition


To obtain protection of a design or a model, the appearance of a creation must represent the whole or part of a product in the form of characteristics such as lines, contours, colours, forms, textures, materials and/or ornamental used in the product itself.


The law defines a product as any industrial or crafted article, including the components for assembling a complex product, packaging, presentation elements, graphic symbols and wording but excluding computer programs.


The design or model must be novel and unique.


Validity


The design and model are valid for a period of five years from the date of application renewable every five years for a maximum of 25 years.


COPYRIGHT PROTECTION


As a founding member of the WTO and in accordance with the provisions of the Agreement of Industrial Property Rights in Relation to Trade (TRIPS), Macau has passed legislation for copyright protection in compliance with the 1886 Berne Convention for Protection of Literary and Artistic Works, the 1952 Geneva Universal Copyright Convention and the 1971 Paris Act of the same convention, as well as the 1961 Rome Convention for the Protection of Performers, Producers of Phonograms and Broadcast Organisations. Also in compliance with the TRIPS Agreement Macau law protects computer software programs as literary works.


As is the case in many other countries Macau does not have a registration system for literary and artistic property, however a high level of protection of copyright can be ensured by the existing law, which includes economic and personal rights.


By Luis Reigadas, RPmacau-Intellectual Property Services, Limited