IP Policies in Jordan

Khaleel N. Najjar

Patent Examiner,Industrial Property Protection Directorate, Ministry of Industry

and Trade

Khaleel N. Najjar

Patent Examiner,Industrial Property Protection Directorate, Ministry of Industry

and Trade

Why Do IP Policies Matter?

Intellectual property is a key component of any innovation system, because it grants the innovator an opportunity to be compensated for investment of time and resources that go into the creation of new products and services.

IP protection gives the innovator exclusive rights, making it easier to stop other people from copying or using his IP without his permission. Protecting an innovator’s IP provides him with security to develop tangible outcomes from his own ideas and creativity. He may be able to gain value by transferring or sharing his protected IP with others

PATENTS

TRADEMARKS

UNFAIR COMPETETION

TRADE SECRETS

PLANT VARIETIES

GEOGRAPHICAL INDICAITONS

TOPOGRAPHIES OF

INTEGRATED CIRCUITS

INDUSTRIAL DESIGN

COPYRIGHTS

AREAS COVERED BY

IP

IP Policies: Jordan*In the last few years intellectual

property appeared as a corner stone in the economical development of Jordan. Therefore, the Governmental structure in Jordan was keen to ensure effective means for protecting IP rights.

*The laws of copyrights, trademarks, patents, and industrial design were amended in 1999 and additional IP laws were enacted in 2000.

*Jordan has also became a party in a number of international

treaties dealing with IP .

lawIssue Date

Trademark Law No. 33 1952

The Goods Marks law no.191953

Protection of Copyrights law No. 221992

Patents Law No. 32 of 19991999

The Geographical Indication Law No. 82000

Protection of Integrated Circuits Design Law No. 10 2000

Industrial Designs and Models Law No. 142000

Unfair Competition and Trade Secrets Law No. 152000

Protection of New Varieties of Plant Law No. 242000

Treaties to which Jordan is PartyEntry Into Force

Convention establishing the World Intellectual Property Organization12th of July 1972

Paris Convention for the Protection of Industrial Property17th of July 1972

Berne Convention for the Protection of Literary and Artistic works28th of July 1999

The WTO Agreement on Trade Related Aspects of Intellectual Property(TRIPS)

April 2000

WIPO Performance and Phonograms Treaty(WPPT)24th of May 2004

WIPO Copy Rights Treaty (WCT)27th of April 2004

The International Convention for the Protection of New Varieties of Plants(UPOV)

24th of October 2004

Arab Convention for Protection of Copyright7th of July 1987

*The awareness of the importance of IPR in Jordan started to rise significantly since 2000. The effect of this awareness was apparent on all levels. Inventors, researchers, companies and non profitable entities from both the private and the public sectors started to show interest in IPR. A lot of the major stakeholders in R&D such as the Royal Society of Science, the Higher Council for Science and Technology, universities and some of the major private companies felt that they need a strategy to address, at a minimum, ownership of intellectual property, conflicts of interest and conflicts of commitment, the handling of confidential information, the principles of IP licensing approaches, the sharing of income derived from intellectual property, and any rights the institution will retain. So, they began to form their own IP policies.

*The IP policies formed by the stakeholders mentioned above were consistent with the mission of each of those entities. Therefore a diversity of IP policies were formed in Jordan. This diversity created the need for a governmental focal entity. Therefore, in the fourth of July 2006, the Minister of Industry and Trade issued the decision to begin the proceedings needed to establish a “national commission

for intellectual property” with the following expected tasks :

The national commission for intellectual property

1-Encouraging companies to improve their IP management.

2-Provide support for small and medium sized enterprises.

3-Establish a strong international cooperation system.

4-Improve the public access to IP information.

5-Facilitate R&D collaboration and IP licensing.

6-Build a foundation of good relations between inventors and technology transfer professionals.

7-Develop a set of "best practice" protocols on IP management as a framework for use by IP consultants practicing in Jordan in assessing the IP capabilities of enterprises .

8-Establishing a pool of high quality IP specialists.

Patents

*Although all IP areas are connected in one way or another to research and development in modern technology, patents are the center piece of these areas where the connection seems strongest and most obvious. Acquiring a patent is one of the first steps that an innovator should take in order to convert the results of his efforts in R&D into tangible commercial value.

*What is a patent?

A patent is a legal document issued by the government conferring exclusive rights to an invention for a limited

period of time.

Invention?The second article of the Jordanian Patent Law No. 32 of 1999 define an

invention to be “Any innovative idea, in any of the fields of technology, which relates to a product or a manufacturing process or both and practically solves a specific problem in any of those fields”.

Exclusive rights?Article 21, paragraph A of the Jordanian Patent Law No. 32 of 1999

stipulates that “A patent shall grant its owner the following rights: Where the subject of the patent is a product, the right to prevent any

person who hasn’t obtained the owner’s authorization from making, exploiting, using, offering for sale, selling or importing that product.

Where the subject of the patent is an industrial process, the rights to prevent any person who hasn’t obtained the owner’s authorization from using the process or the product directly made by the process, or offering for sale, or selling or importing the product. ”

Limited time period?Article 17 of the Jordanian Patent Law No. 32 of 1999 states that “The

duration of the patent of invention shall be for 20 years as of the date of the application for registration under the provisions of this

law” .

Patent granting procedure at Jordanian patent section

* The first step in filing a patent application is to submit all the needed documents to the Jordanian patent section located at the building of the Ministry of Industry and Trade and to pay the applicable registration fees (Currently 50JDs) .

* In order to know how to fill the needed forms and how to draft the

needed technical documents, a detailed guideline are posted on the electronic site of the Ministry. In addition to that, the Jordanian patent section has a specialized staff that can provide guidance to the inventor prior to filing his application.

* After acquiring all the needed documents of a certain application, the application is subjected to substantive and formal examinations. Through the examination procedures, the registrar might find that the application specifications need to be amended. In that case, the registrar must notify the applicant. The applicant must submit the requested amendments in a limited period of time (not exceeding 60 days form the date of the notification) or the applicant looses his right in the application. The registrar may also ask the applicant through the examination procedures to attend an official hearing session to discuss the results of the examination.

* If the Registrar found that the application satisfy the conditions stipulated in the law and the regulations, he shall issue a preliminary acceptance certificate (given that the applicant has paid the applicable fees, which is currently 50JDs ) .

* The registrar will publish an announcement of the acceptance in the official gazette. Within a period of three months, the public has the right to file oppositions.

* If no opposition was filed within the specified time limit or if the opposition has been rejected, the Registrar shall issue his decision granting the patent after the payment of the due fees (currently 50JDs) .

Patents to Motivate R&D

* As we Mentioned before, patents has a direct positive effect on the inventor since he can feel secure to translate his invention into a tangible investment.

* Patents has another indirect but important effect on the progress of technology, this effect is a result of article 21, paragraph C of the Jordanian Patent Law No. 32 of 1999 which says “Notwithstanding any conflicting provision in this law or any other law, all types of scientific research and development and filing applications for obtaining marketing permits carried out before the elapse of the patent protection period shall not be regarded as infringement neither civil nor criminal ”.

* An inventor , who is granted legal protection via the patent will feel safe to lay open his invention in the market. Due to the article mentioned above, third parties will have the freedom to do further research on the subject of the invention.

* In addition to the expected disclosure done by the inventor himself after the grant of the patent, article 23, paragraph b of the Jordanian Patent Law No. 32 of 1999 stipulates that “If the publication fees are paid, the Registrar shall grant the preliminary acceptance certificate on form (6) of the second annex of this regulation. The announcement of the preliminary acceptance shall be published in the official gazette within a period not exceeding one year. The Registrar may extend this period for a period or periods not exceeding one year if he deems that extension a necessity. The said announcement shall include the abstract stipulated in paragraph (c) of article (10) of this regulation and any other data or figures the Registrar deems necessary to publish”.

Licensing * In the theory of IP, a “License” is defined as “A grant of permission

to use an IP right within a defined time, context, market line, or territory”.

* There are important distinctions between exclusive licenses and nonexclusive licenses. An exclusive license is “exclusive” as to a defined scope, that is, the license might not be the only license granted for a particular IP asset, as there might be many possible fields and scopes of use that can also be subject to exclusive licensing. In giving an exclusive license, the licensor promises that he or she will not grant other licenses of the same rights within the same scope or field covered by the exclusive license.

The owner of IP rights may also grant any number of nonexclusive licenses covering rights within a defined scope .

*A patent license is a transfer of rights that does not amount to an assignment of the patent.

Compulsory Licensing

* If an inventor was granted a patent for his invention, it’s naturally expected from him to start the commercialization process of his invention, a time limit of 20 year is more than sufficient for the inventor to practice the exclusive rights given to him by the law.

* If the inventor doesn’t want to exploit the financial value of his invention and only cares about the moral value of it, this will have a negative effect on the technology progression and on the public benefit. For this reason, article 22 of the Jordanian Patent Law No. 32 of 1999 stipulates that “The Minister may grant a license to use a patent to third parties without obtaining the patentee’s consent in any of the following cases exclusively:

A.If the use of the patent by the state authorities or licensed third parties is a necessity for national defense or emergency or for noncommercial public good provided that the patentee is notified as soon as it becomes possible.

B. 1.If the patentee doesn’t exploit it or exploits it insufficiently before the elapse of 4

years as of the application date or 3 years as of the granting date, the period to be applied is the one that elapses later. However, the Minister may grant the patentee an additional grace period if he deems that reasons beyond the control of the patentee have prevented exploitation.

2. For the purposes of item (1) of this paragraph, and without prejudice to the provisions of the related International Conventions, the importation of the subject goods of the patent to the kingdom shall be deemed utilization of the patent.

C. If the patentee exercises his rights in such a way as to prevent others from competing fairly. ”

IP To Motivate R&D: Proved evidences* Upon bringing the issue of strengthened protection of IPRs

in developing countries, you will always come across two arguments: some will say that strengthened protection of IPRs would promote innovation as well as foreign direct investment (FDI) and technology transfer to developing countries, while others fear that the costs of strengthened protection may be too high, particularly in critical areas such as public health. Essentially, many developing countries feel that strengthened protection of IP mainly benefits technology-rich countries.

* The Jordanian experience proved how much strengthened IP protection can be beneficial to the national economy and to the growth of research-based activities. Since 2002 the following facts have been observed in Jordan:

1- The number of filed patent applications achieved a noticeable incremental pace.

IP To Motivate R&D: Proved evidences

2- The number of registered trademarks in the technical fields that are highly dependent on R&D has also shown an incremental rate, which indicates that researchers are harvesting the fruits of their efforts in a tangible financial form.

3- The pharmaceutical field in particular showed a clear relationship between the number of filed patent applications and the number of registered trademarks. The comparable incremental rate of both numbers proves in a way or another the effect of a well implemented IPRs protection system on the growth of technology transfer.

4- The quality and the diversity of granted patents flourished in the past few years. The past three years in particular have witnessed the appearance of unique patents executed by Jordanian inventors. In 2006, a patent submitted by a Jordanian university which discloses a pharmaceutical composition that helps in the process of cancer treatment was granted. A patent for producing cement in a very cheap and fast way was granted in 2008. Another patent which discloses a method for removing bacterial colonies from water using magnetic nano particles extracted from the factories’ chimneys dust was also granted in 2008. In 2007&2008 three preliminary acceptances were granted to a single Jordanian inventor in the field of communications technology.

No. of filed national patent applications per year since 2002

No. of filed international patent applications per year since 2002

Registered trade marks in the field of chemicals per year

Registered trade marks in the field of pharmaceutical and veterinary preparations per year

Registered trade marks in the field of Machines and machine tools; motors and engines per year

Registered trade marks in the field of surgical, medical, dental and veterinary apparatus and instruments per year

No. of pharmaceutical patent applications

filed per year

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