Georgia Amends Patent Law

Aug 3 2023 - 14:39

Amendments to the Georgian patent law, which entered into force on June 2, 2023, were necessary for the validation agreement between Georgia and the European Patent Organization (EPO) to enter into force.

Validation Agreement

The validation agreement, signed on October 31, 2019, was ratified by the Parliament of Georgia on May 17, 2023. The exact date of its entry into force will be determined by the President of the EPO and the Chairman of the Georgian Intellectual Property Office (IPO). Although Georgia is not a contracting state to the European Patent Convention (EPC), the agreement will make Georgia a validation state, enabling the validation of European patents which will then have the same legal effect as Georgian patents. The patent law amendments regulate this validation procedure and the effect of validated patents in Georgia.

Harmonization with European Legislation

The amendments aim to harmonize Georgian patent law with the EPC, European legislation and the Patent Law Treaty. For example, the amendments introduce and regulate the supplementary protection certificate (SPC), harmonizing its term with the EPC, along with the six-month extension for pediatric pharmaceuticals. The duration and conditions for the novelty grace period are now also similar to those provided by the EPC.

Pharmaceuticals

The amendments introduced the Bolar exemption, permitting the use of a patented invention for research and development purposes and for obtaining a marketing license for a pharmaceutical product. Explicit provisions regarding the patentability of first and second medical use claims have also been included.

Additional Inventor and Patent Holder Rights

The amendments regulating additional inventor and patent holder rights have been included. The compulsory license concept has been introduced and clearly defined. The prohibition of infringing acts has been extended to third parties who were aware or should have been aware of taking part in infringing activities. The range of measures against infringers has also been extended, including in particular damages and compensation.

Patent Attorneys

The amendments also specify qualification requirements and registration rules for Georgian patent attorneys, introducing into the law what was earlier regulated by a statute of the Georgian IPO. After January 1, 2025, it will be obligatory for non-resident applicants to be represented by a Georgian patent attorney, otherwise the prosecution of their applications will be terminated.

Clarifications

The amendments bring greater clarity to certain requirements and procedures during various stages of patent prosecution. For instance, the patentability criteria, exceptions to patentability and the scope of protection are now better defined.

The amended law now particularly mentions the Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure, ‘depository of biological material’ and ‘biological material’.

The amendments introduce clearer ‘patent’ and ‘pharmaceutical product’ definitions and explicitly mention plant protection products and a competent authority for their registration.

Regarding application drafting, the amendments introduced the disclosure requirement as well as a requirement for claims to be clear, concise and supported by the description.

Double patenting is now explicitly prohibited.

The amendments clarify substantive examination by mentioning the search, examination of patentability criteria and office action in a logical order. For applications filed as of June 2, 2023, the IPO is now required to send the examination report to applicants, while the procedure of determining the object of protection where the IPO issues a particular type of office action listing the independent claims as determined by the examiners, has been abolished.

Unlike before, when applications were published after the grant decision was issued, applications filed as of June 2, 2023 may now be published 18 months from the priority date, or earlier at the request of the applicant. This should enable effective provisional protection.

Further down the prosecution line, the decision to grant now includes the approval of the final application text by the applicant. The procedure of re-examination, which is effectively a post-grant opposition, is now also clarified in more detail.

Utility Models

The amendments also address utility models, introducing a better definition of a utility model certificate. Utility model examination was also improved – the IPO is now required to send the search report and the prior art search opinion to the applicant, taking into account the results of the novelty examination. At the same time, utility model subject matter has been narrowed down by excluding microorganism strains, plant and animal cell cultures, biotechnology and genetic engineering, and products obtained by chemical synthesis, including pharmaceuticals.

Prepared by: Taras Manolov

For more information, please contact Taras Manolov at our Ukraine office.

Sources: Georgian IPO website, EPO website

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