Patentability: Are patentable, inventions which present the character of novelty and inventiveness and are susceptible to be used in Industry. The patent is granted without guarantee as to its content, accuracy, value, inventiveness or likeliness to be used in Industry.

What is patentable
• new industrial products
• new manufacturing processes
• new applications for old processes
• new plant varieties
• micro-organisms
• pharmaceutical and chemical compositions are not expressly excluded the way they were in the old law and hence are patentable.

What is not patentable:
• discoveries, scientific theories and mathematical abstract programs which have no industrial application
• principles / methods concerning the practice of mental, economical, financial (fiscal) or game activities and rules.
• methods of medical treatment and diagnosis for humans and animals excluding products and equipment used to apply these methods.
• Inventions which are contrary to public order and morality

Disclosure
The disclosure and publicity given to a patent, including sales, which occurs prior to filing the application, impairs the validity of the patent.

Agreements
• Under penalty of annulment, agreements relating to Patents must be in writing
• Patents can be transferred, assigned, mortgaged and bequeathed by will.

FILING PROCEDURE AND MAINTENANCE
REQUIREMENTS
ENFORCEMENT OF RIGHTS
SEMI CONDUCTORS (TOPOGRAPHIES)
REQUIREMENTS

FILING PROCEDURE AND MAINTENANCE
Conduct of the filing proceedings
• The date of receipt of the application in the Patent Office is not considered as the filing date and it takes about two to three days thereafter, to secure an effective filing date. The reason is that the filing taxes are not paid upon lodging the application but deferred until after the Registrar delivers the order to pay taxes to the Ministry of Finances in a separate geographical location.

• The date of tax payment is considered the filing date and a registration number is immediately issued.

• In case no objection is raised by the Registrar as to patentability, the patent is granted within one month from filing, in the absence of examination .

• Immediately thereafter, the patent grant is delivered and the patentee authorized to pay the publication fees.

Registration: a registration number is issued immediately after the filing taxes are paid.

Examination:
There is no examination to check if the claimed invention is new.
The Patent Office has 30 days to examine patentability (vide under“exclusions”)and if the Registrar does not reply within this term, the application is deemed accepted.

The applicant has 60 days to reply to the Registrar’s refusal. The final decision belongs to the Minister of Economy and if this latter continues the refusal, the decision can be appealed before the civil Court of Appeal of Beirut.

Search: search on the prior state of art is not available.

Grant: patent grant is delivered about a month after filing date. 18 months deferral can be requested . (18 months from home application, if claiming priority).

Publication: is secured by the patentee who carries out the formality at the Official Gazette after the patent is granted. The patent is published between 3 to 6 months after grant date. 18 months deferral can be requested .

Term: The patent is granted for a period of 20 years

Annuities: are payable each year at anniversary date of filing.

Grace period: a six month grace period is allowed for annuities, with a surchage.

Recordal: Transfer of property must be recorded to be opposable to third parties. Late recordal is liable to a penalty.

A 3 per mil stamp duty is payable in respect of consideration paid for transfer . A symbolic consideration can be stated. Despite a specific provision therefor, the same applies to licenses, in compliance with the general principles of law.

Restoration of rights: restoration of a patent forfeited for non payment of annuities, may be requested within a period of six months after the end of the grace period, providing there is a legitimate reason. The request is relayed to the Minister of Economy who makes a decision within 30 days. If a reply is not issued within this term, the patent is deemed restored. Final refusals can be appealed before the civil court of Appeal of Beirut.

Utility Patent: cannot be filed.

Compulsory Licensing:
If a patent is not in work within three years, if the patentee fails to incept preparations in view of working or if the patentee stops working the patent within three years, an interested party can seek a compulsory license from Court .

• Compulsory licenses cannot be exclusive. They cannot be assigned unless authorized by Court .
• Royalties are fixed by Court.
• For national welfare considerations, the Government may order the grant of a compulsory license, against compensation .
• These administrative decisions can be appealed by the patentee before the Court of Appeal of Beirut or submitted to arbitration.
• In case the patentee refrains from taking action should his patent be infringed, the compulsory licensee -as well as the exclusive licensee- is entitled to seek interim measures and/or raise a legal action .

REQUIREMENTS:
Documents must be original and filed simultaneously with the application. Except powers (vide Power)

Power of attorney: to expedite the inception of the filing proceedings, the Patent Office accepts faxed powers pending receipt of originals which must follow immediately.
The power must be simply signed and indicate name and capacity of signatory. A general power will serve for continuous applications. A suitable bilingual form is available on this site.

Supporting documents: Original documents must be filed together with the application except powers (vide above). They must be translated into Arabic by a sworn translator.

Priority document: must be filed within 3 months from Lebanese filing date.If it is in a language not familiar to the Registrar, it may have to be translated into Arabic.

Specifications: can be filed in Arabic, French or English

Abstract: must be translated into Arabic. Considering this requirement, we recommend that instructions be sent to us reasonably in advance to allow us complete this pre-requisite and incept filing within delays, if any.

For Lebanese applicants: the following is requested in addition to the remaining requirements:
• Notarization of the power of attorney
• Copy of the circular letter
• Extract from the Registry of Companies

Application
• Simply signed power of attorney indicating name and capacity of signatory.
• Three copies of specifications in English , French or Arabic
• Three copies of drawings
• Arabic translation of the abstract (can be prepared locally)
• True copy of Home registration if claiming priority. Must be filed within three months from Lebanese filing date.
• Assignment of inventor’s rights if Home application is filed in inventor’s name, legalized at Lebanese consul. Must be filed within three months from Lebanese filing date.

Assignment/Merger:
• Simply signed power of attorney indicating name and capacity of signatory.
• Evidencing document mentioning effective date of transfer, legalized (specimen of bilingual deed can be supplied on request)
* 3 per mil stamp duty is payable in respect of consideration paid for transfer. A nominal financial consideration can be stated
* Late recordal is subject to a fine after 3 months from effective date for foreign applicants, and one month for locals.

License:
• Simply signed power of attorney indicating name and capacity of signatory.
• License contract signed by both parties or preferably an extract thereof stating the main terms, legalized .
* 3 per mil stamp duty is perceived on sums stated in the document. A nominal financial consideration can be mentioned.

Change of name:
• Simply signed power of attorney indicating name and capacity of signatory.
• Evidencing document indicating old and new name, legalized .

Change of address:
• No document is required, only the old and new address.

Cancellation:
• Special power of attorney, notarized and legalized .

ENFORCEMENT OF RIGHTS
Counterfeit:
• The infringement of a patent duly published constitutes an act of counterfeit.
• Anyone other than the manufacturer of a counterfeit product, who unintentionally displays, sells, uses a counterfeit product, is not considered liable.

Remedies:
• Legal actions are lodged before the Courts of First Instance and can be appealed before Courts of Appeal and subsequently Supreme Courts.
• To assess likelihood of confusion, Courts use internationally admitted criteria taking into consideration fundamental elements.
• In the course of a legal action and before a final decision is reached on the merits, the Court can order, with or without guarantee, temporary prohibition of the infringing goods and/or impoundment thereof and/or seizure of the machinery and tools which served for the infringement.
• The infringer is liable to pay indemnities covering material and moral damages, lost profit and profit he himself made.
• Patents can be seized by Court order.
• Cancellation of a Patent can be obtained through Courts. The Public Prosecutor is also entitled to inititate proceedings in view of cancellation in case the invention is not patentable (vide under “what is unpatentable”)
• Courts can cancel patents for lack of novelty or inventiveness, unpatentability or for failing to have an industrial application.

Preventive and interim measures:
• In case of imminent infringement, the patentee can seek interim measures from the President of the Court of First Instance or the Public Prosecutor or the Judge of Urgent matters. These measures are notified to competent authorities inter alia Customs.

• The judge of Urgent matters, the President of the Court of Fist Instance or the Public Prosecutor can order, with or without guarantee, inventory , sampling or impoundment. Under penalty of annulment, a law suit civil or criminal must be filed within 15 days from the date the interim measure is carried out.

Inventory and sampling orders are executed by the Police or Customs officers or the Patent Office sworn officers.

• Under penalty of annulment, a legal action must be filed within 15 days from the date the above interim measures are carried out.

Penalties:
Imprisonment from 3 months to 3 years and/or fine are provided by law against counterfeiters and accomplices who intentionally contribute to the infringement of a patent duly published. The personal use of a patent, other than for industrial and commercial intent, is not considered an infringement.
• Penalties are doubled in case of repetition by the infringer or if the infringer is a co-worker or employed by the patentee.
• Compensation for material and moral prejudice including lost sales, and profit made by the infringer may be ordered by courts
• Divulgation of confidential information by co-workers or employees of the plaintiff is punished with the above penalties.

Time frame for obtaining judgments: Civil and criminal cases are settled within 18 to 24 months , at best, in each degree of jurisdiction. Judgments are notified to the Patent Office

Parallel imports: the principle of national or international exhaustion of rights is not applied. Parties revert to the general law and to contractual provisions in as much as they include or not restrictions to export outside the licensed territory. In addition, the exclusive distributor may attack parallel imports in compliance with a special law on exclusive commercial representation.

SEMI CONDUCTORS (TOPOGRAPHIES)
• A topography of semi conductors products which is not commonplace, can be protected at the Protection Office.
• An application for topography cannot be filed after 2 years from the date it is commercially exploited in the world or 15 years after it is first fixed and encoded.
• Rights are effective as from filing date or as at commercialization, if this latter occurs prior to filing, and remain in force 10 years.
• Under the conditions provisioned for patents, the law provides for voluntary exclusive licensing, assignment, mortgage and seizure of rights attached to protected property .
• Rights are not opposable to third parties if the disclosed specifications and designs are not sufficiently elaborated to identify the topography.
• The topography can be inspected at the Patent Office but copies thereof cannot be obtained unless authorized by the designer.

Exclusive rights:
• Reproduction, commercialization and importation of protected topographies or semi conductor products are prohibited.
• Prohibition is effective as from filing date or from the first commercialization if this occurs prior to filing and remains in force for 10 years.
• Protection is void in case the topography is not commercialized inside a period of 15 years from first fixation and encoding.

Exclusions:
• Reproduction for the purpose of evaluation, analysis and education
• New protectable topographies resulting from such evaluation, analysis and education
• Anyone who acquires a semi conductor product in good faith. In case the user plans to continue using the product commercially, a compensation must be awarded to the rightholder.

REQUIREMENTS
• Specifications and representations identifying the topography. The designer may keep confidential the parts he is not willing to disclose
• Information as to the date and place of first commercial exploitation or first fixation and encoding
• Identification of the applicant
• A POA simply signed stating name and capacity of signatory

For local applicants the following is requested in addition to the other requirements:
• Notarization of the power of attorney
• Copy of the circular letter
• Extract from the Registry of Companies

Remedies at Law:
The law does not provide for counterfeiting nor for sanctions for the case protected rights are infringed. It does not either provide for preventive or interim measures. It is however assumed that interim measures can be sought in case of infringement, and be sanctioned by civil penalties in accordance with the general law.

Copyright 2003 WTH Mulford. All rights are reserved
Designed and developed by Arachnea sal - Beirut - Lebanon