New Industrial Property Act 2019

NEW INDUSTRIAL PROPERTY ACT 2019

A new Industrial Property Act (the “Act”) was enacted in Mauritius in August this year and will come into operation on a date to be fixed by proclamation. Once it comes into operation, the Act will repeal the Patents, Industrial Designs and Trademarks Act of 2002 (the “PIDT Act 2002”).

In a nutshell, the Act aims to modernise and consolidate the industrial property framework, facilitate the registration of industrial property rights, and promote research, innovation, investment and economic growth in the country.

Whilst the current industrial property laws only guarantee protection for certain intellectual property rights, such as patents, industrial designs and trademarks, the new Act extends coverage to additional industrial property rights such as utility models, layout designs, breeder’s rights and geographical indications.

Through this Act, Mauritius will accede to new industrial property related treaties, such as the Patent Cooperation Treaty, the Hague Agreement and the Protocol Relating to the Madrid Agreement.

Currently, there are three governing pieces of legislation for the protection of intellectual property rights in Mauritius, namely: (i) PIDT Act 2002, (ii) the Copyrights Act of 2014, and (iii) the Protection against Unfair Practices (Industrial Property Rights) Act of 2002 (the “PAUP Act 2002”).

MAIN ASPECTS OF THE ACT

The Act will introduce several new features and will amend existing intellectual property laws. For instance, the new Industrial Property Office of Mauritius (the IPOM”) will have additional duties which includes, inter alia:

  • maintaining up to date databases,
  • undertaking and assist in conducting research on industrial property,
  • devising and assist in the preparation of educational and sensitisation programmes;
  • defining strategies, programmes and action plans in line with regional and international best practices, and
  • ensuring proper coordination, both nationally and internationally, amongst various agencies dealing with intellectual property matters.

ADDITIONAL FEATURES OF THE ACT

The new Act will:

  • Replace the Industrial Property Office Controller with the Director of the IPOM, who shall have the power to investigate any allegation of an offence, under both the Act and the PAUP Act 2002;
  • Introduce consequential amendments to PAUP Act 2002, i.e. any act in breach of the intellectual property rights covered by the Act may give rise to the commencement of civil proceedings for unfair practice and a claim of damages under the PAUP Act 2002;
  • Establish the Intellectual Property Council, which shall be an independent overarching institution regrouping representatives from both the public and the private sector, who shall advise the Minister on any matter regarding intellectual property policies;
  • Allow employees who create patented inventions under an employment contract to obtain a fair share of the benefits which the employer would derive from granted patents having a commercial value;
  • Allow for the registration and protection of utility models, i.e. small and incremental innovations similar to patents and which are defined under the Act as “technical creations that consist of new shapes or configurations or components of an object that increases its functionality or utility”;
  • Allow for the registration and protection of layout designs of integrated circuits, i.e. a three-dimensional layout of an integrated circuit such with a particular arrangement in a chip of active and passive electronic components;
  • Allow the registration and protection of new plant varieties i.e. plant breeder’s rights and for the registration and protection of geographical indications, i.e. signs used on products that have a specific geographical origin and possess qualities or a reputation that are due to that origin (e.g. local beer, rum, tea, honey and special sugar).

ACCESSION OF MAURITIUS TO VARIOUS TREATIES THROUGH THE ACT

  • Accession to the Patent Cooperation Treaty (PCT): for the filing of international patent applications with the possibility to seek patent protection for an invention simultaneously in the 152 states which have acceded to the PCT;
  • Accession to the Madrid Protocol (for trademarks): for registration of industrial designs in the International Registration of Industrial Designs, with the possibility of obtaining and maintaining trademark rights simultaneously in 120 member states, notably by filing only one application in Mauritius and paying only one set of fees in Mauritius;
  • Accession to the Hague Agreement (for industrial designs): for the registration of trademarks in the International Registration of Marks with the possibility of seeking protection for industrial designs simultaneously in 120 member countries, notably by way of a single application, either to the IPOM or the International Bureau of the World Intellectual Property Organisation.

DURATION OF STATUTORY PROTECTION

Under the Act, the length of statutory protection granted to registered patents will remain for 20 years, starting from the filing date of the application, subject to the payment of an annual fee. The registration for the other intellectual property rights are as follows:

  • Trademarks: 10 years (renewable for consecutive periods of 10 years)
  • Utility models: 6 years (renewable for 2 further consecutive periods of 2 years)
  • Layout designs:  10 years
  • Breeder’s rights: 25 years
  • Industrial designs: 5 years (renewable for 3 consecutive periods of 5 years)

Publication is written by:

Sameer Tegally

Bhavna Fowdur