e-TRIPS Gateway (Beta)

36. Please state if your legislation grants additional protection for innovations after the 20 years of patent protection has lapsed.

36. Please state if your legislation grants additional protection for innovations after the 20 years of patent protection has lapsed.

37. Please explain how your legislation provides for the enhanced patent protection of patents or patent applications pending on 1st January 1995.

Prior to the present Patents Act, the 1906 Patents Act was in force. The present Act came into force in 2002 and so patents and pending patent applications in 1995 would have been treated according to the provisions of the 1906 Act. The earlier legislation failed to provide adequately for the protection of the product as opposed to the process. The patent had a maximum duration of fourteen years and more contemporary considerations such as the applicability of the Patent Cooperation Treaty were not taken account of. The prior Act failed to provide appropriately for the concept of novelty of invention and was overall very thin on procedural aspects. The various aspects and nuances of infringement were not comprehensively dealt with. All of these areas have since been remedied by the existing Patents Act.

38. Please explain how your legislation provides for the reversal of the burden of proof in relation to process patents.

Section 40(7) provides that in any proceedings for infringement, other than criminal proceedings, where the subject matter of the patent is a process for obtaining a product, the burden of establishing that the product was not made by the process shall rest on the defendant if (a) the product is new; or (b) a substantial likelihood exists that the product was made using another process and the patentee has been unable, through reasonable efforts, to determine the process used.

39. Please describe how your legislation protects Topographies.

Under s. 6 of the Protection of Layout Designs (topographies) of Integrated Circuits Act, it is unlawful to perform certain acts without the authorisation of the right holder. This includes: (a) the reproduction, whether by incorporation in an integrated circuit or otherwise, of the protected layout-design in its entirety or any part thereof, except the reproduction of any part that does not comply with the requirement of originality defined in section 4; (b) the importation, sale or other distribution, for commercial purposes, of the protected layout-design, an integrated circuit in which the protected layout-design is incorporated, or an article incorporating such an integrated circuit in so far as it continues to contain an unlawfully reproduced layout-design. Where an infringement has occurred it is open to the right holder to apply to the Court for relief including an injunction, damages, an order for the seizure, forfeiture or destruction of the infringing goods or any other remedy provided for in law.

40. Please explain what protection your national legislation grants to right holders against the unlawful importation, sale or distribution for commercial purposes of topographies including integrated circuits or other articles in which a topography is incorporated in accordance with Article 36 of the TRIPS Agreement.

See answer to question 39 above. [Answer 39: Under s. 6 of the Protection of Layout Designs (topographies) of Integrated Circuits Act, it is unlawful to perform certain acts without the authorisation of the right holder. This includes: (a) the reproduction, whether by incorporation in an integrated circuit or otherwise, of the protected layout-design in its entirety or any part thereof, except the reproduction of any part that does not comply with the requirement of originality defined in section 4; (b) the importation, sale or other distribution, for commercial purposes, of the protected layout-design, an integrated circuit in which the protected layout-design is incorporated, or an article incorporating such an integrated circuit in so far as it continues to contain an unlawfully reproduced layout-design. Where an infringement has occurred it is open to the right holder to apply to the Court for relief including an injunction, damages, an order for the seizure, forfeiture or destruction of the infringing goods or any other remedy provided for in law.]

41. Please explain how your legislation provides for the derogation from Article 36 as specified in Article 37 of the TRIPS Agreement where a person has no knowledge or reasonable grounds to know when acquiring an integrated circuit or an article incorporating such an integrated circuit that it contains an unlawful topography.

Section 6(3)(d) of the Act provides that protection of layout-designs shall not extend to acts of infringement referred to in s. 6(2)(b) (expanded in the answer to question 39) where the person performing or ordering the performance of such an act did not know, and had no reasonable ground for knowing, when acquiring the integrated circuit or the article incorporating such integrated circuit, that it incorporated an unlawfully reproduced layout-design. Section 6(4) further provides that where such a person who has unknowingly infringed the right has received sufficient notice that the layout-design was unlawfully reproduced, that person may perform any of the acts referred to in that subsection only with respect to the stock on hand or ordered before he received the notice, and shall be liable to pay, to the right holder, a sum equivalent to such reasonable royalty as would be payable under a freely negotiated licence in respect of such layout-design.

42. Please state the term of protection granted by your legislation to topographies.

Section 7 provides that the term of protection is for ten years after the date of commencement. Protection commences: (a) on the date of the first commercial exploitation, anywhere in the world, of the layout-design by, or with the consent of, the right holder, provided that an application for protection is filed by the right holder with the Registrar within the time limit referred to in section 8(3); or (b) on the filing date accorded the application for the registration of the layout-design filed by the right holder if the layout-design has not been previously exploited commercially anywhere in the world.

43. Please explain whether or not your legislation grants a defined period of time for the protection of undisclosed information. If so, please give the time span.

There is currently no legislation on the protection of undisclosed information. Therefore no further responses can be given to questions 43 to 45.

45. Please explain how your legislation defines data submitted to governments or governmental agencies.

There is currently no legislation on the protection of undisclosed information. Therefore no further responses can be given to questions 43 to 45.

44. Please explain how your legislation defines undisclosed information.

There is currently no legislation on the protection of undisclosed information. Therefore no further responses can be given to questions 43 to 45.

46. Please describe how your legislation provides for effective action against infringement of intellectual property rights.

Please refer to the responses to the Checklist on Issues of Enforcement.

47. Please explain whether or not your legislation provides for a mechanism to appeal to judicial bodies of final administrative decisions.

Please refer to the responses to the Checklist on Issues of Enforcement.

48. Please describe how your legislation authorizes judges to order production of evidence by the opposing party. Please give precise information on what measures are taken to ensure the protection of confidential information.

Please refer to the responses to the Checklist on Issues of Enforcement.

49. Please quote provisions of your legislation that authorize judges to order a defendant to desist from an infringement.

Please refer to the responses to the Checklist on Issues of Enforcement.

50. Please quote what provisions of your legislation authorize judges to order the payment to the right holder of adequate damages to compensate the injury he suffered.

Please refer to the responses to the Checklist on Issues of Enforcement.

51. Please quote what provisions of your legislation authorize judges to order the payment of the right holder's expenses by the infringer.

Please refer to the responses to the Checklist on Issues of Enforcement.

52. Please explain if and how judges have the authority to order that infringing goods are placed outside channels of commerce or destroyed.

Please refer to the responses to the Checklist on Issues of Enforcement.

53. Please quote what provisions of your legislation authorize judges to indemnify a defendant in the event of abuse by the plaintiff.

Please refer to the responses to the Checklist on Issues of Enforcement.

54. Please explain how your legislation implements Article 50 of the TRIPS Agreement.

Please refer to the responses to the Checklist on Issues of Enforcement.

55. Please identify the competent authorities in your jurisdiction who receive requests from right holders for an application to suspend the release of counterfeit goods by the customs authorities.

Please refer to the responses to the Checklist on Issues of Enforcement.