Patents, Industrial Designs and Trademarks Act

Patents, Industrial Designs and Trademarks (Industrial Property Tribunal) Appeal Rules 2007

[GN 112 of 2007 – 1 July 2007] [Section 50(2) and (5)]

1. These rules may be cited as the Patents, Industrial Designs and Trademarks (Industrial Property Tribunal) Appeal Rules 2007.

2. In these rules –

"Act" means the Patents, Industrial Designs and Trademarks Act;

"Registrar" means the person designated as such under section 9(3) of the Act.

3. Any person who wishes to appeal to the Supreme Court under section 50 of the Act shall, within 28 days of the determination of the Tribunal –

(a) lodge with, or send by registered post to, the Registrar of the Tribunal a written application requiring the Tribunal to state and sign a case for the opinion of the Supreme Court on the grounds stated therein; and

(b) at the same time, lodge a copy of his application with, or send it by registered post to, the other party.

4. (1) The Tribunal shall within 15 days of the date on which an application under rule 3 is lodged with, or received by registered post by, the Registrar of the Tribunal –

(a) state and sign the case;

(b) by registered post, send it to the appellant and send a copy to the other party.

(2) A case shall indicate –

(a) the names and addresses of the parties;

(b) the nature of the matter on which the Tribunal was required to adjudicate;

(c) the facts which were proved or admitted before the Tribunal;

(d) the submissions, if any, made to the Tribunal by the parties' legal or other representatives;

(e) the determination given by the Tribunal;

(f) the questions of law on which the opinion of the Supreme Court is required.

5. The appellant shall, within 60 days of the date of the determination by the Tribunal, cause the case stated to be lodged with the Master and Registrar of the Supreme Court who shall inform the parties by registered post of the date on which the matter shall be heard by the Supreme Court.

6. The Supreme Court may, if it thinks fit, cause the case to be remitted to the Tribunal for amendment and thereupon the Tribunal shall –

(a) amend the case accordingly;

(b) forward it to the Master and Registrar of the Supreme Court;

(c) send a copy thereof by registered post to the appellant and the other party.

7. The Supreme Court shall determine the questions of law arising on the case and may –

(a) (i) affirm, reverse or amend the determination of the Tribunal; or

(ii) remit the matter to the Tribunal, with its opinion on the matter, to be further determined; and

(b) make such other order in the matter as it thinks fit.

8.

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Patents, Industrial Designs and Trademarks (Tribunal) (Rules of Procedure) Regulations 2008

[GN 26 of 2008 – 1 July 2007] [Section 53]

1. These regulations may be cited as the Patents, Industrial Designs and Trademarks (Tribunal) (Rules of Procedure) Regulations 2008.

2. In these regulations –

"Act" means the Patents, Industrial Designs and Trademarks Act;

"Registrar" means the public officer appointed as such under section 9(3) of the Act.

3. A person appealing under section 10(1)(a) of the Act shall –

(a) give notice of appeal in the form set out in the First Schedule by lodging the notice within 28 days of the determination with the Registrar;

(b) pay, at the time of lodging the notice of appeal, the appropriate fee specified in the Second Schedule to the Registrar; and

(c) send a copy of the notice of appeal to the respondent and to any other party to the dispute.

4. A person applying for an invalidation order under section 25, 34 or 42 of the Act, shall –

(a) give notice of the application in the form set out in the Third Schedule by lodging the application with the Registrar;

(b) pay, at the time of lodging the notice, the appropriate fee specified in the second column of the Second Schedule to the Registrar; and

(c) send a copy of the notice of the application to the respondent and to any other party to the dispute.

5. A person applying for a ruling on the interpretation of any provision of any industrial property enactment under section 10(1)(b) of the Act shall –

(a) make a written application in the form set out in the Fourth Schedule; and

(b) pay, at the time of making the application, the appropriate fee specified in the Second Schedule to the Registrar.

6. (1) The Registrar shall, on receipt of –

(a) the notice of appeal;

(b) the application for an invalidation order; or

(c) the application for a ruling on the interpretation of any provision of any industrial property enactments,

as the case may be, fix the matter for the hearing within a period of 90 days of the lodging of the appeal or application.

(2) The Registrar shall inform the parties of the date of the hearing.

7. The Registrar shall –

(a) provide a copy of the determination, order or ruling of the Tribunal, as the case may be, to a party; and

(b) on request made by any interested party, issue, on payment of the appropriate fee specified in the second column of the second schedule, a copy of the determination, order or ruling of the Tribunal, or a copy of the proceedings of the Tribunal.

8. Where, in spite of having been duly notified of the date of hearing, the appellant or applicant does not appear or is not represented on the day of the hearing of an appeal or an application fixed under regulation 6, or at any continuation or adjournment of an appeal or an application, as the case may be, the Tribunal may strike out the appeal or application.

9. The Registrar shall –

(a) make a declaration of secrecy in the form set out in the Fifth Schedule;

(b) receive security for costs from a party who is requested to pay such costs by the Tribunal;

(c) keep a record of the proceedings before the Tribunal;

(d) have the custody of every document or exhibit produced at a hearing before the Tribunal;

(e) perform other duties entrusted to him by the Tribunal which are consistent with the Act or any regulations made under it.

10. Every member of the Tribunal shall –

(a) before he begins to perform his duties under the Act, make a declaration of secrecy in the form set out in the Fifth Schedule;

(b) maintain and help in maintaining the secrecy of any matter which comes to his knowledge in the performance of his duties, or arising out of the business of the Tribunal;

(c) not communicate to any person any information except in the performance of his duties under the Act and shall continue to do so after the termination of his tenure as member.

11.

12. (1) The Tribunal shall have an official seal bearing the name of the Tribunal and its contact details.

(2) The seal shall be kept by the Registrar.

(3) Every document issued by the Tribunal shall bear the official seal.

13.

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FIRST SCHEDULE

[Regulation 3(a)]

INDUSTRIAL PROPERTY TRIBUNAL

NOTICE OF APPEAL UNDER SECTION 10(1)(A) OF THE PATENTS, INDUSTRIAL DESIGNS AND TRADEMARKS ACT AGAINST THE DECISION OF
THE CONTROLLER UNDER SECTION 4(1)(A) OF THE ACT

I/We .................................................................................. (name of appellant(s)) of ......
................................................. (address(es) of appellant(s)) hereby appeal against the
decision of the Controller dated ..............................................................

Particulars of the decision appealed against –

........................................................................................................................................

........................................................................................................................................

........................................................................................................................................

Grounds of appeal (to be set out in detail) –

........................................................................................................................................

........................................................................................................................................

........................................................................................................................................

.................................................
Name(s)

.................................................
Signature(s)

............................

Date

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SECOND SCHEDULE

[Regulations 3(b), 4(b), 5(b) and 7(b)]

FEE

  (Rs)
For lodging of appeal 250
For application for an invalidation order 250
For application for a ruling on the interpretation of any provision of an industrial property enactment 250
For copy for each page of determination, ruling, transcript of proceedings or any other document 5 per page

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THIRD SCHEDULE

[Regulation 4(a)]

INDUSTRIAL PROPERTY TRIBUNAL

NOTICE OF APPLICATION FOR AN INVALIDATION ORDER UNDER SECTION 25, 34 OR 42 OF THE PATENTS, INDUSTRIAL DESIGNS AND TRADEMARKS ACT

1. I/We .......................................................................................... (name of applicant(s))of.......................................................................................................... (address(es) of applicant(s)) hereby apply for an order invalidating the registration of a patent, industrial design or mark* registered on .................................................................

2. Particulars of the mark for which the invalidation is sought –

........................................................................................................................................

........................................................................................................................................

........................................................................................................................................

3. Grounds of invalidation (to be set out in detail) –

........................................................................................................................................

........................................................................................................................................

........................................................................................................................................

.................................................
Name(s)

.................................................
Signature(s)

.............................

Date

* Delete as appropriate.

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FOURTH SCHEDULE

[Regulation 5(a)]

INDUSTRIAL PROPERTY TRIBUNAL

NOTICE OF APPLICATION FOR A RULING ON THE INTERPRETATION OF A PROVISION OF AN INDUSTRIAL PROPERTY ENACTMENT UNDER
SECTION 10(1)(B) OF THE PATENTS, INDUSTRIAL DESIGNS
AND TRADEMARKS
ACT

I/We .............................................................................................. (name of applicant(s))
of .................................................................................................................. (address(es)
of applicant(s)) hereby apply for a ruling of the Tribunal on the interpretation of ........
..................................................... [section(s) of the Act].

................................................
Name(s)

................................................
Signature(s)

................................................

Date

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FIFTH SCHEDULE

[Regulations 9(a), 10(a), and 11(b)]

DECLARATION OF SECRECY

I ..................................., bearer of National Identity Card No. ............. and, presently, holding office as ................................... at the Ministry of ..........................................., hereby declare that as a member/Registrar* of the Industrial Property Tribunal, I shall maintain absolute integrity and devotion to duty and conduct myself in a manner conducive to the best interests, credit and prestige of the Industrial Property Tribunal.

I hereby declare that I shall maintain absolute secrecy in relation to any matter or other confidential information that comes to my knowledge in the performance of my duties as member/Registrar* of the Industrial Property Tribunal.

I further declare that I shall continue to maintain absolute secrecy in relation to any matter or other confidential information that has come to my knowledge in the performance of my duties as member/Registrar* of the Industrial Property Tribunal even after the cessation of my tenure as member/Registrar* of the Industrial Property Tribunal.

I am fully conscious that any breach of the above may lead to disciplinary and/or legal action against me by the Government of Mauritius or the competent authority, as the case may be.

Declared in Chambers

This ......... day of .............. 20...

...............................................................

Before me

District Magistrate of Port Louis

*Delete as appropriate.

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Patents, Industrial Designs and Trademarks Regulations 2004

[GN 45 of 2004 – 6 January 2003] [Section 53]

1. These regulations may be cited as the Patents, Industrial Designs and Trademarks Regulations 2004.

2. In these regulations –

"Act" means the Patents, Industrial Designs and Trademarks Act.

3. The fees to be paid in respect of matters arising under these regulations shall be those specified in the First Schedule.

4. (1) Any person who wishes to obtain the grant of a patent or the registration of an industrial design or a mark shall make an application in the form set out in the Second, Third or Fourth Schedule, as the case may be.

(2) The applicant shall fill all the parts and sections provided in the forms, and in accordance with such notes and instructions as may be provided by the Controller.

5. (1) Any application made under the Act or these regulations shall be in English, and any document forming part of the application or submitted to the Controller shall be accompanied by an English translation, where the document is in a language other than English.

(2) Any document in English translation filed under paragraph (1) shall be taken to be the original document and shall, in case of conflict, prevail over any other version.

6. (1) The names of natural persons shall be indicated by the persons' family name and given name, the family name being indicated before the given name.

(2) The names of legal entities shall be indicated by their full official designations.

(3) (a) An address shall be indicated in such a way as to satisfy the customary requirements for prompt postal delivery at the indicated address and, in any case, shall consist of all the relevant administrative units, including the house or building number, if any.

(b) An address shall also indicate telephone and fax numbers, and where available, the electronic mail address.

(4) (a) The nationality shall be indicated by the name of the country of which a person is a national.

(b) The residence shall be indicated by the name of the country of which a person is a resident.

(c) A legal entity shall indicate the name of the country under whose laws it is constituted and the address of its registered office.

7. Where a person signs a document on behalf of a body corporate or unincorporate, the Controller may, if he considers it necessary, request evidence of authorisation to sign.

8. (1) The Controller shall not act on a power of attorney appointing an approved agent unless the power of attorney –

(a) complies with section 49 of the Act; and

(b) is registered with the Registrar-General.

(2) The power of attorney appointing an approved agent shall be filed together with the application made under regulation 4(1), or where the power of attorney is not available at the time of filing the application, it shall be filed within 2 months of the filing date of the application.

(3) Where the power of attorney is not filed within the period specified in paragraph (2), any procedural step taken by the law practitioner or approved agent, other than the filing of the application, shall be considered not to have been taken.

(4) Where the power of attorney does not comply with section 49 of the Act, any procedural step taken by the approved agent, other than the filing of the application, shall be considered not to have been taken.

PART I – PATENTS

9. The classification of patents shall be in accordance with the Strasbourg Agreement of 1971 as subsequently revised (International Patent Classification) for all purposes relating to the grant and publication of patents, as well as for the maintenance of classified search files.

10. (1) Every application for a patent shall be in the form specified in the Second Schedule.

(2) Every element of the application attached to a prescribed form shall be on paper which shall be flexible, strong, white, smooth, non-shiny and durable.

(3) The application under paragraph (1) shall also –

(a) indicate each applicant's name, address, nationality and residence;

(b) indicate the name and address of the inventor, or a statement showing the entitlement to the invention by the applicant;

(c) where appropriate, indicate the name and address of the approved agent;

(d) contain a description of the invention;

(e) state the claims;

(f) include any drawing that may be relevant for the purposes of the application; and

(g) contain an abstract of the invention.

(4) The application under paragraph (1) shall be accompanied by the appropriate fee specified in the First Schedule.

(5) No application shall be processed unless the application fee has been paid.

11. (1) The description of the invention shall state the title of the invention as it appears in the request and shall –

(a) specify the technical field to which the invention relates;

(b) indicate the background art and cite the relevant documents reflecting such art;

(c) disclose the invention in such terms that it can be understood by a person having ordinary skill in the art and state its advantageous effects with reference to the background act;

(d) mention any advantageous effects of the invention with reference to the background art;

(e) where applicable, briefly describe the figures in the drawings;

(f) set forth at least one mode contemplated by the applicant for carrying out the invention and, where appropriate, this shall be done in terms of examples and with reference to the drawings, if any; and

(g) indicate explicitly, when it is not obvious from the description or nature of the invention, the way in which the invention is industrially applicable and the way in which it can be made and used, or where it can only be used, the way in which it can be used.

(2) The manner and order specified in paragraph (1) shall be followed except where, because of the nature of the invention, a different manner or a different order would result in a better understanding and presentation of the invention.

12. (1) Where there are several claims, they shall be numbered, consecutively, in Arabic numerals.

(2) The claim shall define the invention in terms of the technical features of the invention.

(3) Where appropriate, a claim shall include –

(a) a statement indicating the necessary technical features of the invention which, in combination, are part of the prior art; and

(b) a characterising portion preceded by the words "characterised in that", "characterised by", "wherein the improvement comprises", or any other words to the same effect and stating concisely the technical features which, in combination with the features stated under paragraph (a), the claim is desired to protect.

(4) No claim shall rely, in respect of the technical features of the invention, on references or cross-references to any part of the description or drawings, except where it is absolutely necessary to do so.

(5) (a) Where the application contains drawings, the technical features mentioned in the claims shall, as far as possible, be followed by the reference signs relating to such features, and when used, the reference signs shall be placed within brackets.

(b) Where inclusion of reference signs does not particularly facilitate a better understanding of a claim, it shall not be made.

(6) Any claim submitted after the date of filing of the application, and which is not identified with the claims previously appearing in the application, shall, at the choice of the applicant, be submitted either as a new claim or as an amended claim, together with the appropriate fee specified in regulation 10(4) or 23.

(7) The deletion of any claim previously appearing in the application shall be made by indicating the number of the previous claim followed by the word "cancelled".

13. (1) Any drawing forming part of an application for a patent shall be on writing sheets, the usable surface area of which shall not exceed 26.2 centimetres by 17 centimetres.

(2) The sheets shall not contain any frame round the usable or used surface and the margins shall be –

(a) 2.5 centimetres at the top;

(b) 2.5 centimetres on the left side;

(c) 1.5 centimetres on the right side; and

(d) one centimetre at the bottom.

(3) Every drawing shall be done –

(a) without colouring, in durable, black, sufficiently dense and dark, uniformly thick and well-defined lines and strokes to permit satisfactory reproduction;

(b) indicating cross sections by hatching, which hatching shall not impede the clear reading of the reference signs and leading lines;

(c) in a scale and graphical representation, such that a photographic reproduction with a linear reduction in size to two-thirds shall enable all details to be distinguished without difficulty;

(d) with simple and clear numbers, letters and reference signs without using brackets, circles and inverted commas;

(e) in such manner that the elements of the same figure are in proportion to each other, unless a difference in proportion is necessary for the clarity of the figure; and

(f) in such manner that the height of the numbers and letters are not less than 0.32 centimetre, and for the lettering of drawings, the Latin and, where customary, the Greek alphabet shall be used.

(4) Where the scale is given as an exception on a drawing, the scale shall be represented graphically.

(5) (a) One sheet of drawings may contain several figures.

(b) Where figures drawn on 2 or more sheets are intended to form one whole figure, the figures on the several sheets shall be so arranged that the whole figure can be assembled without concealing any part of the partial figures.

(c) The different figures shall be arranged without wasting space, and clearly separated from one another.

(d) The different figures shall be numbered, consecutively, in Arabic numerals independently of the numbering of the sheets.

(6) (a) Any reference sign not mentioned in the description or claims shall not appear in the drawings, and vice versa.

(b) The same features, where denoted by reference signs, shall, throughout the application, be denoted by the same signs.

(7) (a) Subject to subparagraphs (b) and (c), the drawings shall not contain textual matter.

(b) A single word such as "water", "steam", "open", "closed" or words such as "section on AA" may be used in a drawing.

(c) In the case of electric circuits, block schematic or flow sheet diagrams, a few short catchwords may be used.

(8) Flow sheets and diagrams shall be considered as drawings.

(9) Every sheet of the drawings shall be numbered in Arabic numerals.

14. (1) Every abstract shall be so drafted that it can efficiently serve as a scanning tool for purposes of searching in the particular art.

(2) (a) The abstract shall consist of –

(i) a summary of the disclosure as contained in the description, the claims, and any drawings, indicating the technical field to which the invention pertains; and

(ii) where applicable, the chemical formula which, among all the formulae contained in the application, best characterises the invention.

(b) The summary shall be so drafted as to enable the clear understanding of the technical problem, the gist of the solution to that problem through the invention and the principal use or uses of the invention.

(3) The abstract shall –

(a) be as concise as the disclosure permits and shall, as far as practicable, not exceed 150 words; and

(b) not contain statements on the alleged merits or value of the invention or on its speculative application.

(4) Every main technical feature mentioned in the abstract and illustrated by a drawing in the application shall be followed by a reference sign placed between parentheses.

(5) The abstract shall be accompanied by the most illustrative of any drawings furnished by the applicant.

15. (1) The terminology and the signs shall be consistent throughout the application.

(2) Only such technical terms, signs and symbols shall be used as are generally accepted in the field in question, unless otherwise approved by the Controller.

(3) Units of weights and measures shall be expressed in accordance with the metric system.

(4) Temperatures shall be expressed in degrees celsius.

(5) Density shall be expressed in metric units.

(6) Indications of heat, energy, light, sound and magnetism, including mathematical formulae and electrical units, shall be expressed in accordance with generally used rules.

(7) Chemical formulae, their symbols, atomic weights, and molecular formulae, shall be expressed in accordance with generally used rules.

16. (1) Any statement or document accompanying an application shall be filed in 3 copies, or in such number of copies as the Controller may direct.

(2) Every element of the application shall be presented in such manner as to allow direct reproduction by photography, electrostatic processes, photo-offset, microfilming or digital reproduction.

(3) Only one side of every sheet contained in the application shall be used.

(4) The size of the sheets shall be A4, 29.7 centimetres by 21 centimetres, unless where appropriate, the Controller accepts sheets of other sizes.

(5) The margins of sheets shall be –

(a) for the upper margin of each page, except the first page, 20 millimetres;

(b) for the upper margin of the first page, 30 millimetres;

(c) for the side margin adjacent to the binding, 25 millimetres;

(d) for the other side margin, 20 millimetres; and

(e) for the bottom margin, 20 millimetres.

(6) Every sheet shall be numbered in consecutive Arabic numerals.

(7) In effecting the sequential numbering of the sheets, the elements of the application shall be placed in the following order –

(a) the request;

(b) the description;

(c) the claims;

(d) the abstract; and

(e) the drawings.

(8) The sequential numbering of the sheets shall be effected by using 3 separate series of numbering, namely –

(a) the first series applying to the request only, and commencing with the first sheet of the request;

(b) the second series commencing with the first sheet of the description, and continuing through the claims until the last sheet of the abstract; and

(c) the third series being applicable to the sheets of the drawings only, and commencing with the first sheet of the drawings.

(9) The text matter of the application shall be typed, but graphic symbols, chemical or mathematical formulae and certain characters may be handwritten or drawn.

17. Every application made under section 15 of the Act shall be construed as permitting –

(a) in relation to an independent claim for a given product, the inclusion in the same application, of an independent claim for a process specially adapted for the manufacture of the product or for the use of the product;

(b) in relation to an independent claim for a given process, the inclusion in the same application, of an independent claim for an apparatus or means specifically designed for carrying out the said process;

(c) the inclusion, in the same application, of 2 or more independent claims of the same category which cannot readily be covered by a single generic claim;

(d) the inclusion, in the same application, of a reasonable number of dependent claims, claiming specific forms of the invention claimed in an independent claim.

18. (1) Every divisional application made under section 15(4) of the Act shall contain a reference to the initial application.

(2) Where an applicant wishes a divisional application to benefit from any priority claim for the initial application, he shall make a request to that effect in the divisional applica

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