Samoa joins key IP treaties

Background

Before the passing of Samoa's Intellectual Property Act 2011 (the Act) overhauled the country's IP systems, patent and trade mark owners could have their IP rights re-registered in Samoa, within 2 years of receiving a granted IP right in their country of origin. The passing of the Act removed the re-registration provisions, instead allowing for priority claims for patents and trade marks. This paved the way for Samoa to become a party to the Paris Convention, which they did in September 2013.

Since December 2018, Samoa has been a party to the Madrid system for the registration of trade marks. As of 2 January 2020, Samoa is also a party to the Patent Cooperation Treaty, the Hague System for protection of industrial designs, and the Lisbon System for protection of geographical indications.

Patent Cooperation Treaty

Samoa was the 153rd state to sign up to the PCT. Patent applicants will now be able to use their PCT international application to apply for patent protection in Samoa, offering them the well-known advantages of the PCT, in deferring costs and decisions about which countries to seek patent protection.
Samoa offers both standard patents, and innovation patents. Although substantive examination is a requirement of the new law, the Samoan Ministry of Commerce, Industry and Labour does not currently have the capability to perform substantive examination, and instead "liaise with relevant external experts". Patent filing numbers are low, and as of 2018 there were 52 patents in force in Samoa (compared with 33,331 in New Zealand, and 156,244 in Australia).

Hague System - Industrial Designs

Industrial designs can now be protected in Samoa via the Hague System as well as via the Paris Convention. To date, there are 73 contracting states signed up to the Hague System. As with the Madrid system for trade marks, the benefits are that a single application and set of fees can provide the basis for registration of up to 100 industrial designs in all contracting states. The majority of Hague members are European countries, with the largest users being Germany and Switzerland. WIPO indicates that Samoa is the first Pacific country to join the Hague System. Previously, design filings in Samoa were mostly filed by residents, with 116 design registrations in force as of 2018.

Lisbon System - Geographical Indications

The Lisbon System (Geneva Act) offers protection for geographical indications. Contracting states can apply for protection of their geographical indication ("appellation of origin") in all states, through a single registration procedure. The joining of the European Union as the 30th state on 26th November 2019 caused the system to enter into force. Again, Samoa is the first Pacific country to sign up to the Lisbon System. WIPO has an interactive map in which Lisbon appellations can be searched by country.

Penny Walsh - January 2020

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