Liberian IP legislation
Liberian IP legislation was updated significantly through the passing of the Industrial Property Act of 2016. This legislation repealed the Industrial Property Act of 2003, as well as copyright legislation that dated back to 1997.
The new legislation did many things. It established the Liberia Intellectual Property Office (LIPO). It made provision for the protection and registration of patents, utility models, industrial designs, lay-out designs of integrated circuits, copyright, trade marks (including well known marks, collective marks, certification marks and protection through international registrations) and trade names. It also introduced anti-counterfeiting measures.
Regulations relating to trade marks and patents have been promulgated. What follows is a discussion of some of the more important provisions. The Regulations that were passed under the Industrial Property Act have recently come to light. Here are some of the more important provisions:
Liberian IP legislation: Trade Marks in Liberia
The document is the Administrative Regulation on Trademark, Administrative Regulation LIPO/no.001/tm/01/2018.
Application procedure, Section 6
A Form TM1 is required, and a Power of Attorney must be filed within one month.
Formalities, Section 7
An applicant has a period of two months to respond to a notification of non-compliance with formalities.
Priority, Section 9
Priority can be claimed on application, or with a period of one month of the filing.
Duration and Renewal, Section 12
Ten-year periods for each.
Notification of renewal is to be sent to the trade mark owner six months prior to expiration, and the renewal fee is to be paid within six months of expiration.
Restoration, Section 13bis
A request for restoration of a lapsed registration can be made within a period of six months of the removal.
Transformation, Section 14
There is provision for transformation of a cancelled International Registration (IR) designating Liberia – this must be done within three months from the date of cancellation of the IR.
Opposition, invalidation or revocation, Section 17
The provisions are as follows:
Pre-grant (trade mark opposition)
The notice of opposition must be filed within a period of one month of publication.
Post-grant (invalidation or revocation)
The notice of opposition must be filed before a period of five years has elapsed since the issuance of the certificate of registration.
Duration of opposition, invalidation for revocation proceedings, Section 18
The opposition, invalidity or revocation will be finalised within a period of three months from the date of filing of the notice – a written decision will seemingly be handed down within this period.
Where any response is required the period is ten days from date of receipt.
Legal Instruments for opposition, invalidation or revocation proceedings, Section 19
Notarised and legalised Powers of Attorney are required for any of these proceedings – Section 19.
Extensions for opposition, invalidation or revocation proceedings, Section 20
It is possible to request an extension of the period for filing a response for up to 90 days, additional extensions (six months maximum) are at the Registry’s discretion.
General provisions for opposition, invalidation or revocation proceedings, Section 22
- The Registrar can allow extensions of terms.
- As regards legal papers, the complainant can serve a complaint, the defendant can file an answer, and the defendant has a right of reply which may not raise new issues.
- The designated officer is required to have a pre-hearing conference with the parties.
- English will be the official language of the proceedings.
- A notice of opposition can be signed by a trade mark attorney or an IP agent recognised by the Office.
- The LIPO Act will be the major legal instrument to be considered.
Liberian IP legislation: Patents in Liberia
The document is Administrative Regulation on Patent, 4 July 2018, Administrative Regulation LIPO/No. 001/P/O1/2018. Here are some of the more important provisions.
LIPO Patent Applications, Section 4
An application shall be in English and contain a request; a description; one or more claims; one or more drawings; an abstract
There is much more detail about language (English), official forms, petition, title of invention, details of applicant, description of invention, invention, claims.
Declaration of priority, Section 5
If priority is claimed the declaration must indicate:
- the date of the earlier application;
- the number of the application (this can be furnished within three months);
- the name of the state where it was filed; and
- in the case of a regional or international application, the office of filing.
The applicant can amend the contents of the declaration at any time before grant.
The applicant must furnish a certified copy of the earlier application within two months.
If the earlier application is not in English the applicant must furnish an English translation within one month.
Application for registration of registered designs, Section 6
The rules relating to patent applications shall, subject to all necessary changes having been made, apply to registered designs.
Application for registration of utility models, Section 6 bis
The rules relating to patent applications (particularly 4, 5, 6 and 20) shall, subject to all necessary changes having been made, apply to registered designs.
Authorisation of representative, Section 7
To be filed within two months of filing.
Filing date, Section 8
The Office will accord a filing date and it will notify the applicant of the date.
Fees, Section 9
The prescribed fees must be paid in Liberian or US dollars.
Examination as to formalities, Section 19
If examination reveals lack of compliance with the requirements the Office will invite the applicant to correct this within a period of one month. If it fails to do so, there will be a refusal, although the applicant will be entitled to seek a reconsideration within a period of two months.
Examination as to substance, Section 11
There will be a search and examination report. Where the Office finds that the requirements of Novelty, Inventive Step and Industrial Applicability are not fulfilled it will invite the application to submit observations and, where applicable, an amended application for re-consideration.
Examination of utility models as to substance, Section 11 bis
Novelty and industrial applicability shall be applied.
Time limits, Section 12
The time-limit for a request for reconsideration is two months.
Extension of time limits, Section 12 bis
This will be subject to a fee.
Information concerning corresponding foreign applications, patents or other titles of protection, Section 13
The Office may request details of any other application for a patent relating to the same, or essentially the same, invention.
Withdrawal of application, Section14
The applicant can withdraw the application in writing.
Divisional patent applications, Section 15
There is provision for the filing of a divisional application relating to any pending Liberian patent application.
Publication of LIPO patent applications, Section 16
Publication will occur as soon as possible after the expiry of 18 months from the date of filing or, where priority has been claimed, from the date of priority.
Grant, recordal and publication, Section 17
If all the requirements are met LIPO will grant the patent, publish it in the journal and, send a certificate to the applicant. The publication will reflect all the essential information.
Payment of annual maintenance fees, Section 18
These will be payable on the eve of each anniversary of the date of filing and must be paid in advance.
Registration of assignments, licences and other similar rights, Section 19
There is provision for recordal of these transactions. Such a recordal can be cancelled upon application by an interested party on proof, for example, of a lapse of rights.
International applications, Section 20
The procedure for an international application is set out in this section.
Request for re-establishment of rights, Section 21
Such a request must be filed within two months of the removal of the cause of non-compliance, and at latest within six months of the unobserved time limit. Payment of a restoration fee will be required.
Working an invention, Section 22
This is defined to include producing, using, exporting, importing or offering for assignment.
The new legislation and the implementing regulations should be seen as a welcome development. We will monitor developments and publish updates as appropriate.
Contact us for further information.