(216) Regarding Industrial Property
Protection in Belarus
The following announcement was furnished by the
World Intellectual Property Organization of Geneva, Switzerland.
ANNOUNCEMENT OF THE PROTECTION OF
INDUSTRIAL PROPERTY IN BELARUS
The situation of industrial property protection in Belarus is
summarized below.
I. Legislation
(1) On Feb. 5, 1993, the Law on Patents for Inventions, the Law on
Patents for Industrial Designs and the Law on Trademarks and Service
Marks of Belarus and the respective Parliamentary Decrees putting the
said laws into effect were adopted and entered into force.
II. Membership in Treaties
(2) The Government of Belarus deposited on Apr. 14, 1993, a declaration
to the effect that the Paris Convention for the Protection of Industrial
Property, the Madrid Agreement Concerning the International Registration
of Marks and the Patent Cooperation Treaty continue to be applicable to
Belarus. Belarus was already party to the Convention Establishing the
World Intellectual Property Organization.
III. Industrial Property Rights Granted by the Patent Office of the
Soviet Union
(3) A patent for invention, an industrial design patent or trademark
certificate, which was issued by the Patent Office of the Soviet Union
may be registered by the State Patent Office of Belarus at the request
of the owner. Upon registration, such industrial property rights will be
considered as having the same effects as a patent for invention,
industrial design patent or trademark certificate issued by the State
Patent Office of Belarus. The duration is 20 years from the filing date
of the application with the patent Office of the Soviet Union in the
case of a patent for invention, 15 years from the filing date of the
application with the Patent Office of the Soviet Union in the case of an
industrial design patent, and 10 years from the filing date of the
request for registration by the State Patent Office of Belarus in the
case of a trademark certificate, the latter request to be filed before
the expiry of the 10-year term from the filing date of the application
with the Patent Office of the Soviet Union. The filing date and any
priority date of the application with the Patent Office of the Soviet
Union will be maintained.
(4) As regards inventors' certificates and industrial design
certificates granted by the Patent Office of the Soviet Union in
relation to which a 20-year term in the case of inventions, or a 15-year
term in the case of industrial designs, both counted from the filing
date of the application, has not expired, the State Patent Office of
Belarus will grant for the remaining term a Belarusian patent for
invention or industrial design patent upon the joint request of the
applicant and the inventor (inventors). Failing the agreement between
the applicant and the inventor (inventors), no patent will be granted.
(5) The request for registration by the State Patent Office of
Belarus must be filed before Feb. 5, 1994, in the case of inventions and
industrial designs, and before Oct. 5, 1993, in the case of trademarks.
It must be accompanied by the original or a copy, certified by a the
patent owner, or the applicant, or the patent attorney, of the patent or
certificate issued by the Patent Office of the Soviet Union, and also by
a copy of the document attesting that the fee for the preceding term has
been paid.
(6) Any inventor's certificate which is not exchanged for a patent
for invention will enjoy the legal status which had been applicable to
the invention in question in the Soviet Union before July 1, 1991.
IV. Applications for Industrial Property Rights Filed with the Patent
Office of the Soviet Union or with the Patent Office of the Russian
Federation Before Feb. 5, 1993
(7) The applicant of an application for a patent for invention or an
inventor's certificate, or of an application for an industrial design
patent or an industrial design certificate which had been filed with the
Patent Office of the Soviet Union or with the Patent Office of the
Russian Federation before Feb. 5, 1993, and in respect of which a
decision to grant has been taken, may request the State Patent Office of
Belarus to issue a Belarusian patent for invention or industrial design
patent. The request must be filed before Aug. 5, 1993.
(8) The applicant of an application for a patent for invention or an
inventor's certificate, of an application for an industrial design
patent or an industrial design certificate, or of an application for a
trademark certificate, which had been filed with the Patent Office of
the Soviet Union or with the Patent Office of the Russian Federation
before Feb. 5, 1993, and the processing of which has not been completed
and in respect of which patents or certificates have not been granted,
may request the State Patent Office of Belarus before Aug. 5, 1993, that
the said application be further processed according to the Belarusian
legislation and that the priority date of the said application be
maintained, provided that the request is filed before the expiry of 27
months from the filing date of the first application in the case of
inventions, and before the expiry of 21 months from the filing date of
the first application in the case of industrial designs and trademarks.
V. Applications for Industrial Property Rights Filed, Before Apr. 14,
1993, with the Industrial Property Offices of States Party to the Paris
Convention for the Protection of Industrial Property
(9) The State Patent Office of Belarus will recognize the priority date
of the first application filed in a State party to the Paris Convention,
provided that, in the case of inventions, the request for the grant of a
Belarusian patent based on the said application is filed with the State
Patent Office of Belarus before the expiry of 27 months from the filing
date of the first application or, in the case of industrial designs and
trademarks, the request for the grant of a Belarusian industrial design
patent, or for the grant of a Belarusian trademark certificate, based on
said application, is filed with the State Patent Office of Belarus
before the expiry of 21 months from the filing date of the first
application.
VI. Effects in Belarus of International Applications under the Patent
Cooperation Treaty (PCT)
(10) (a) As mentioned in paragraph (2), above, on Apr. 14, 1993,
Belarus deposited a declaration of continuation, the effect of which is
that the Patent Cooperation Treaty (PCT) is applied by Belarus. Nationals
and residents of Belarus can therefore file international applications,
and Belarus can be designated and elected in international applications
filed, from that date.
(b) Rules 32.1 and 32.2 of the Regulations under the PCT,
allow the extension of international applications to certain successor
States.
(c) For the purpose of determining the status of international
applications with respect to Belarus, one has to distinguish between:
(i) international applications designated the Soviet Union
which were filed before Dec. 25, 1991 (see (d), below);
(ii) international applications-irrespective of the designations they
contain-which were filed between Dec. 25, 1991, and June 22, 1993 (see
(e) to (g), below);
(iii) international applications specifically* designated
Belarus filed on or after Apr. 14, 1993 (see (h), below).
(d) As regards any international application whose
international filing date is before Dec. 25, 1991, and in which the
Soviet Union has been designated, the "national filing effect" of any
such application under Article 11(4) of the PCT will, pursuant to the
deposit by Belarus of its declaration of continuation, be recognized in
Belarus. The conditions under which any such international application,
or any patent or inventor's certificate resulting therefrom and granted
by the Patent Office of the Soviet Union or by the Patent Office of the
Russian Federation, may continue to have effect in Belarus are the
following:
(i) if a patent for invention or an inventor's certificate has
been granted by the Patent Office of the Soviet Union or by the Patent
Office of the Russian Federation on the basis of international
application, the conditions referred to in paragraph (3) to (6) above,
are applicable;
(ii) if the applicant has entered the national phase before the
Patent Office of the Soviet Union or the Patent Office of the Russian
Federation but a patent for invention or an inventor's certificate has
not been granted by either of those Offices, the conditions referred to
in paragraphs (7) and (8), above, are applicable, provided that the
applicant, before Aug. 5, 1993, files with the State Patent Office of
Belarus a request that the international application be further
processed according to the Belarusian legislation; the request must be
accompanied by a copy of the Russian translation of the international
application submitted to the Patent Office of the Soviet Union or the
Patent Office of the Russian Federation and a declaration that the
application is still pending before the Patent Office of the Russian
Federation, except where a decision to grant a patent has been made, in
which case only the requirements referred to in paragraph (7), above,
apply;
(iii) if the applicant has not entered the national phase before the
Patent Office of the Soviet Union or the Patent Office of the Russian
Federation and the time limit for entering the national phase had not
expired on Dec. 24, 1991, the applicant must furnish to the State Patent
Office of Belarus,within the following time limit, a translation of the
international application into Belarusian or Russian and evidence that
the prescribed fee (see paragraph (13), below) has been paid to the
latter Office.
--before Aug. 5, 1993, or before the expiration of 21 months from the
priority date, whichever is later, if Belarus is not elected under
Chapter II of the PCT within 19 months from the priority date;
--before Aug. 5, 1993, or before the expiration of 31 months from the
priority date, whichever is later, if Belarus is elected under Chapter
II of the PCT within 19 months from the priority date.
(e) As regards any international application whose
international filing date is later than Dec. 24, 1991, and not later
than June 22, 1993,** its effect may be extended to Belarus
(irrespective of the designations it contains) through the performance
by the applicant of the following acts:
(i) filing with the International Bureau of the World
Intellectual Property Organization (WIPO) a request for extension;
(ii) paying to the International Bureau of WIPO an extension fee of
185 Swiss francs, payable only in Swiss francs.
(f) The applicant in respect of each and every international
application referred to in (e), above, or his agent or common
representative if there is one, will receive a written notification form
the International Bureau of WIPO drawing his attention to the fact that
he can, by filing a written request for extension, extend the effects of
the international application to Belarus. The notification will, in
particular, specify the modes of payment of the extension fee of 185
Swiss francs. The request for extension must contain the identification
of the applicant's international application by its international
application number. A form which may be issued for the purpose of
requesting the extension to Belarus will be attached to the
notification. The request for extension must be in English or French,
and may be sent by telefax or telex. The request for extension and the
corresponding payment must reach the International Bureau of WIPO before
the expiration of three months from the date of the notification sent by
the International Bureau of WIPO; if either the request or the fee is
received later, the request will be refused. It is recommended that
applicants await the notification from the International Bureau of WIPO
and use the form attached to it, but requests and payments may be made
prior to receipt of the notification from the International Bureau of
WIPO.
(g) If the conditions described in (e) and (f), above, are fulfilled,
Belarus will be considered as having been designated in the
international application on its international filing date. In order to
enter the national phase before the State Patent Office of Belarus, the
applicant must furnish to that Office, within the following time limit,
both a translation of the international application into Belarusian or
Russian and evidence that the prescribed fee (see paragraph (13), below)
has been paid:
(i) before Aug. 5, 1993, or before the expiration of 21 months
from the priority date, whichever is later, if Belarus is not elected
under Chapter II of the PCT within 19 months from the priority date and
item (iii) does not apply;
(ii) before Aug. 5, 1993, or the expiration of 31 months from the
priority date, whichever is later, if Belarus is elected under Chapter
II of the PCT within 19 months from the priority date;
(iii) before Aug. 5, 1993, or the expiration of 31 months from the
priority date, whichever is later, if a request for extension to Belarus
is made after, but the demand for international preliminary examination
was made before, the expiration of 19 months from the priority date, and
a later election of Belarus is made together with the request for
extension or within three months from the date of the request for
extension.
(h) As regards any international application whose
International filing date is on or after Apr. 14, 1993, and in which
Belarus is specifically designated, the applicant, in order to enter the
national phase before the State Patent Office of Belarus, must furnish
to that Office, within the following time limit, both a translation of
the international application into Belarusian or Russian and evidence
that the prescribed fee (see paragraph (13), below) has been paid to the
said Office:
(i) before the expiration of 21 months from the priority date
if Belarus is not elected under Chapter II of the PCT with 19 months
from the priority date;
(ii) before the expiration of 31 months from the priority date if
Belarus is elected under Chapter II of the PCT within 19 months from the
Priority date.
VII. Effects in Belarus of International Registrations under the
Madrid Agreement Concerning the International Registration of Marks
(11)(a) As mentioned in paragraph (2), above, On Apr. 14, 1993,
Belarus deposited a declaration of continuation, the effect of which was
that the Madrid Agreement Concerning the International Registration of
Marks is applied by Belarus.
(b) Pursuant to the deposit of the declaration of continuation
and to Rule 38 of the Regulations under the Madrid Agreement, certain
international registrations may have effect in Belarus subject to the
conditions described below. The international registrations are those
which have a territorial extension to the Soviet Union effective from a
date prior to Dec. 25, 1991.
(c) The conditions referred to above are the following:
(i) the filing with the International Bureau of the World
Intellectual Property Organization (WIPO) of a request;
(ii) the payment to the International Bureau of WIPO of a fee, the
amount of which is 62 Swiss francs per international registration.
(d) The owner of each and every international registration
concerned, or his representative (if the owner has a representative
whose name appears in the International Register), will receive a
written notice from the International Bureau of WIPO drawing his
attention to the fact that he can, by filing a written request, obtain
the continuation of the effect of the international registration in
Belarus. The notice will, in particular, specify the modes of payment of
the fee. The request must contain the identification of the
international registration concerned by its international registration
number. A form (in French) will be attached to the notice and may be
used. The request must be in English or French, and may be sent by
telefax or telex. The request and the corresponding payment must reach
the International Bureau of WIPO before the expiration of six months
from the date of the notice sent by the International Bureau of WIPO; if
either the request or the fee is received later, the request will be
refused. Requests and payments may be made upon receipt of the notice of
the International Bureau of WIPO.
(e) If the conditions described above are fulfilled, the
international registration concerned will, with respect to Belarus, have
effect as of the effective date of the territorial extension to the
Soviet Union and benefit from any priority validly claimed with regard
to such extension.
(f) For each international registration which has a territorial
extension to the Russian Federation effective as of a date between Dec.
25, 1991 and Apr. 14, 1993, the owner may request the State Patent
Office of Belarus, before Aug. 5, 1993, that the said registration be
processed as an application under the Belarusian legislation. The
request must be accompanied by an extract from the International
Register established by the International Bureau of WIPO, by a
declaration that, to the best knowledge of the owner, the international
registration still has effect in the Russian Federation, and by an
application filed according to the Belarusian legislation.
(g) For each international registration not covered by (b) or (f),
above, namely, for each international registration which has no
territorial extension to the Soviet Union or to the Russian Federation
or whose international registration date is later than Apr. 14, 1993,
protection in Belarus can only be obtained by filing, through the
intermediary of the national Office of the country of the owner, a
request for territorial extension under Rule 20 of the Regulations under
the Madrid Agreement. It is noted that requests for territorial
extension to Belarus are possible at present.
VIII. Procedural Provisions
(12) If an applicant does not have his ordinary residence or principal
place in business in Belarus, he must authorize a representative in
Belarus, and all requests, applications and other documents must be
filed through the intermediary of such a representative.
(13) The official fees applicable to the procedures referred to under
paragraphs (3), (4), (5), (7), (8) (10) and (11)(f) are available from
the State Patent Office of Belarus.
(14) Any request referred to under paragraphs (3), (4), (5), (7),
(8), (10)(d)(ii) and (11)(f), above, and any declaration referred to
under paragraphs (10)(d)(ii) and (11)(f), above, must be filed in
Belarusian or Russian.
IX. Address of the National Patent Office of Belarus
State Patent Office of Belarus
66, pr. Skoriny
Minsk 220072
Belarus
bnTel.: (70172) 395 840
Fax.: (70172) 394 130
June 11, 1993 MICHAEL K. KIRK
Acting Assistant Secretary
and Acting Commissioner of
Patents and Trademarks
[1152 TMOG 23]
*In this announcement, an international application is regarded
as "specifically" designating Belarus either if Belarus has been
designated under Rule 4.9(a) of the Regulations under the PCT or if the
designation of Belarus has been confirmed under Rule 4.9(c) of those
Regulations.
**With the exception of any such international application
whose international filing date is on or after Apr. 14, 1993, and in
which Belarus is specifically designated: in such a case, the procedure
described in (e) to (g) is not applicable, and the procedure described
in (h) applies. It should be noted that Belarus can be specifically
designated only in those international applications filed on or after
Apr. 14, 1993.