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Iran: the New IP Law

The Industrial Property Office of Iran (IPO) has introduced the procedural By-law relating to the new Intellectual Property Law on March 10, 2009. The law itself was published in the Official Gazette on April 20, 2008; the following headlines are noticeable:
- Industrial designs will be protected.
- New patent law.
- Late payment fee for trademark renewal introduced.
- Trademarks are vulnerable to cancellation for non-use.
- Trade names will be protected.
- New opposition procedure.
- No time limit for filing cancellation action against a registered trademark.
- Better protection for IP owners to encounter infringers and counterfeiters.
- Licensor must supervise license product for quality and standard in order for agreement to be valid.
- Longer time limit (2 months) for filing petition before the court against IPO decisions
Foreign applicants who file a trademark, industrial design and/or patent application must complete their files, by providing all the requirements, within sixty days; otherwise, an incomplete application will be rejected. If approved by IPO, special extension of time may be granted.
The official fee for all IP matters will increase substantially, some by 100% and others by more than 100%.

The new law introduces a definition for collective marks and provides for registration of these marks in Iran.
The opposition procedure has been changed so that any interested party can oppose a mark either by filing a protest with the Iranian Intellectual Property Office or by submitting a petition to the court for cancellation of a registered trademark. Previously, it was mandatory to bring the cancellation proceedings within three years from the registration date; this time limit is no longer applicable.
According to the new IP Law, renewal of a trademark is possible within one year prior to expiration date and six-month grace period is allowed after expiration date; however, trademark owner must pay the penalty.

Industrial Designs
The old law was silent regarding the protection of industrial designs; the new law, however, now provides for the registration and maintenance of industrial designs for a period of five years, which is renewable for two further periods of five years. Regarding the industrial designs’ renewal, one can initiate the renewal procedure six months prior to expiration date. Although the renewal is possible within six-month after the expiration date, the industrial design owner must pay the penalty.

The old law required absolute novelty regarding patents where disclosure of the patent’ subject matter to the public before the filing or priority date would destroy the novelty requirement; therefore, patent could not be granted. The new law has changed this criterion to relative novelty where disclosure of the patent’ subject matter does not completely take away the chance of registration. In such a case, disclosure of the subject matter of patent without knowledge or consent of the inventor will not destroy the novelty requirement for grant of patent if it occurred less than six months before the filing or priority date. Annuity payments can be made two months prior to the due date; although the patent owner can make the payment within six months after the due date, a penalty will be imposed.