Industrial Property (Amendment) Act 2009

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AN ACT
TO AMEND THE INDUSTRIAL PROPERTY ACT 1994

BE IT ENACTED by the King and Legislative Assembly of Tonga in the
Legislature of Tonga as follows:

1. (1) This Act may be cited as the Industrial Property (Amendment) Act
2009.

(2) The Industrial Property Act 1994 is in this Act referred to as the

Principal Act.

2. Section 2 of the Principal Act is amended by-

(a) inserting in the definition of “agent”, the words “with a valid

practicing licence” before the word “resident”; and

(b) adding the following new definitions in the appropriate places:

““International Bureau” means the International Bureau of World

Intellectual Property Organisation as described in the Madrid

Protocol;”;

““Madrid Protocol” means the Protocol relating to the Madrid

Agreement concerning the International Registration of Marks,

adopted in Madrid on 27 June 1989;”;

““Patent Cooperation Treaty”

means the Patent Cooperation Treaty established in Washington on

June 1970;”; and

I assent,

GEORGE TUPOU V,

30th October, 2009

HRH PRINCESS SALOTE PILOLEVU TUITA

13th August, 2009.

Tonga. No. 5 of 2009.
(b) inserting in subsection (4)(a) the words “or in any other country”

after the word “Tonga”; and
(c) deleting subsection (5) and substituting with the following-

“(5) (a) It is an infringement of a patent for any person to
make, construct, use or sell the patent invention solely for
use reasonably related to the development and submission
of information required under any law in Tonga that
regulates the manufacture, construction, use or sale of any
product.

(b) The right of prior user referred to in subsection 4(d) may be
transferred or devolve only together with the enterprise or
business, or with that part of the enterprise or business, in
which the use have been made.”

9. Section 15 of the Principal Act is amended -

(a) in subsection (1), by inserting the words “locally or by
importation,” after “insufficiently worked”;

(b) in subsection (3), by deleting the words “other than to
import” and substituting with “including importation”; and

(c) in subsection (4) by -

(i) deleting the words “not exclude,” and substituting with
the word “fix”; and

(ii) deleting paragraphs (a) and (b) and replacing with the
following-

“(a) the scope and function of the licence;
(b) the time limit which the licencee shall begin to

exploit the patented invention; and

(c) the amount of the adequate remuneration to be paid to the
owner of the patent and the conditions of payment.”

(d) adding new subsections (5) to (9) immediately after subsection
(4) as follows -

“(5) If the invention claimed in a patent (later patent) cannot be
exploited in the country without infringing a patent granted on the
basis of an application benefiting from an earlier filing or , where
appropriate, priority date, the Registrar upon the request of the
owner of the later patent, may issue a non-voluntary licence to the
extent necessary to avoid infringement of the earlier patent.

4 The Industrial Property (Amendment) Act 5 of 2009

5th November, 2009

““World Trade Organization” means the World Trade
Organisation established in Geneva in 1995.”

3. Section 6 of the Principal Act is amended -

(a) at the end of subsection (3), by -

(i) replacing the full stop with a comma; and

(ii) inserting the words “as long as the said application is not
withdrawn, abandoned or rejected.”;

(b) at the end of subsection (4), by -

(i) replacing the full stop with a comma; and

(ii) inserting the words “and the owner of a patent shall have
the right to conclude licencing contracts.”

4. Section 7(4) of the Principal Act is amended by deleting the words “at
least one mode known to the applicant for carrying out the invention”
and replacing them with “the best mode for carrying out the invention
known to the applicant at the filing date, or where priority is claimed, at
the priority date of the application.”

5. Section 9(1) of the Principal Act is amended, at the end of the subsection
by -

(a) replacing the full stop with a comma; and

(b) inserting the words “or any member of the World Trade
Organisation.”

6. Section 11 of the Principal Act is amended -

(a) at the end of the subsection (5) by -

(i) replacing the full stop with a comma; and

(ii) adding the words “and the Regulations relating thereto and
whether information requested under Section 10, if any, has

been provided.”; and

(iii) adding the following new subsection (6), (7) and (8)
immediately after subsection (5) -

“(6) Where the Registrar is of the opinion that the application complies with
the requirements under subsection (5), the Registrar shall make a
decision as to whether the requirements of sections 3, 4, 5, 7(4), 7(5),
7(6), 7(7), and 8, and the Regulations, cause the application to be

examined.

(7) The Registrar shall take into account, for the purpose of subsection (6) -

(a) the result of any international search report and international
preliminary examination report established under the Patent
Cooperation Treaty in relation to the application;

(b) a search and examination report submitted under section 10(2)(c)
relating to, or a final decision submitted under section 10(2)(c) on
the refusal to grant a patent on a corresponding foreign application;
and

(c) a search and examination report which was carried out upon his
request by an external search and examination authority.

(a) Any international application filed or received by the
Registrar in which Tonga is designated for the purposes of
obtaining a patent under this Act shall be treated as an application

filed under this Act.

(b) The registrar shall examine and process all international

applications referred to in paragraph (a) and the provisions of

the Patent Cooperation Treaty and the Regulations relating

thereto.

In the event of conflict between the provision of this Act and its

Regulations and the provisions of the Patent Cooperation Treaty,

the former shall prevail unless the application of these provisions

contravene the underlying principles of the latter, in which case

the latter shall prevail, according to prescribed procedures.”

7. Section 12 of the Principal Act is amended by-

(a) inserting in subsection (1), the words “and (6)” after “section 11

(5)”; and

(b) adding the following new subsection (3) and (4) immediately after

subsection (2)-

“(3) The Registrar shall, whenever possible, make a final decision regarding

the application not later than two years after the commencement of the

examination referred to in section 11.

(4) The Registrar shall, upon request of the owner of the patent, make

changes in the text or drawings of the patent in order to limit the extent

of the protection conferred thereby, provided that the change would not

result in the disclosure contained in the patent going beyond the

disclosure contained in the initial application on the basis of which the

patent was granted.”

8. Section 13 of the Principal At is amended by-

(a) inserting in subsection (3), the words “and section 16A” after

“section 15”;

2 The Industrial Property (Amendment) Act 5 of 2009 The Industrial Property (Amendment) Act 5 of 2009 3

““World Trade Organization” means the World Trade
Organisation established in Geneva in 1995.”

3. Section 6 of the Principal Act is amended -

(a) at the end of subsection (3), by -

(i) replacing the full stop with a comma; and

(ii) inserting the words “as long as the said application is not
withdrawn, abandoned or rejected.”;

(b) at the end of subsection (4), by -

(i) replacing the full stop with a comma; and

(ii) inserting the words “and the owner of a patent shall have
the right to conclude licencing contracts.”

4. Section 7(4) of the Principal Act is amended by deleting the words “at
least one mode known to the applicant for carrying out the invention”
and replacing them with “the best mode for carrying out the invention
known to the applicant at the filing date, or where priority is claimed, at
the priority date of the application.”

5. Section 9(1) of the Principal Act is amended, at the end of the subsection
by -

(a) replacing the full stop with a comma; and

(b) inserting the words “or any member of the World Trade
Organisation.”

6. Section 11 of the Principal Act is amended -

(a) at the end of the subsection (5) by -

(i) replacing the full stop with a comma; and

(ii) adding the words “and the Regulations relating thereto and
whether information requested under Section 10, if any, has

been provided.”; and

(iii) adding the following new subsection (6), (7) and (8)
immediately after subsection (5) -

“(6) Where the Registrar is of the opinion that the application complies with
the requirements under subsection (5), the Registrar shall make a
decision as to whether the requirements of sections 3, 4, 5, 7(4), 7(5),
7(6), 7(7), and 8, and the Regulations, cause the application to be

examined.

(7) The Registrar shall take into account, for the purpose of subsection (6) -

(a) the result of any international search report and international
preliminary examination report established under the Patent
Cooperation Treaty in relation to the application;

(b) a search and examination report submitted under section 10(2)(c)
relating to, or a final decision submitted under section 10(2)(c) on
the refusal to grant a patent on a corresponding foreign application;
and

(c) a search and examination report which was carried out upon his
request by an external search and examination authority.

(a) Any international application filed or received by the
Registrar in which Tonga is designated for the purposes of
obtaining a patent under this Act shall be treated as an application

filed under this Act.

(b) The registrar shall examine and process all international

applications referred to in paragraph (a) and the provisions of

the Patent Cooperation Treaty and the Regulations relating

thereto.

In the event of conflict between the provision of this Act and its

Regulations and the provisions of the Patent Cooperation Treaty,

the former shall prevail unless the application of these provisions

contravene the underlying principles of the latter, in which case

the latter shall prevail, according to prescribed procedures.”

7. Section 12 of the Principal Act is amended by-

(a) inserting in subsection (1), the words “and (6)” after “section 11

(5)”; and

(b) adding the following new subsection (3) and (4) immediately after

subsection (2)-

“(3) The Registrar shall, whenever possible, make a final decision regarding

the application not later than two years after the commencement of the

examination referred to in section 11.

(4) The Registrar shall, upon request of the owner of the patent, make

changes in the text or drawings of the patent in order to limit the extent

of the protection conferred thereby, provided that the change would not

result in the disclosure contained in the patent going beyond the

disclosure contained in the initial application on the basis of which the

patent was granted.”

8. Section 13 of the Principal At is amended by-

(a) inserting in subsection (3), the words “and section 16A” after

“section 15”;

2 The Industrial Property (Amendment) Act 5 of 2009 The Industrial Property (Amendment) Act 5 of 2009 3

AN ACT
TO AMEND THE INDUSTRIAL PROPERTY ACT 1994

BE IT ENACTED by the King and Legislative Assembly of Tonga in the
Legislature of Tonga as follows:

1. (1) This Act may be cited as the Industrial Property (Amendment) Act
2009.

(2) The Industrial Property Act 1994 is in this Act referred to as the

Principal Act.

2. Section 2 of the Principal Act is amended by-

(a) inserting in the definition of “agent”, the words “with a valid

practicing licence” before the word “resident”; and

(b) adding the following new definitions in the appropriate places:

““International Bureau” means the International Bureau of World

Intellectual Property Organisation as described in the Madrid

Protocol;”;

““Madrid Protocol” means the Protocol relating to the Madrid

Agreement concerning the International Registration of Marks,

adopted in Madrid on 27 June 1989;”;

““Patent Cooperation Treaty”

means the Patent Cooperation Treaty established in Washington on

June 1970;”; and

I assent,

GEORGE TUPOU V,

30th October, 2009

HRH PRINCESS SALOTE PILOLEVU TUITA

13th August, 2009.

Tonga. No. 5 of 2009.
(b) inserting in subsection (4)(a) the words “or in any other country”

after the word “Tonga”; and
(c) deleting subsection (5) and substituting with the following-

“(5) (a) It is an infringement of a patent for any person to
make, construct, use or sell the patent invention solely for
use reasonably related to the development and submission
of information required under any law in Tonga that
regulates the manufacture, construction, use or sale of any
product.

(b) The right of prior user referred to in subsection 4(d) may be
transferred or devolve only together with the enterprise or
business, or with that part of the enterprise or business, in
which the use have been made.”

9. Section 15 of the Principal Act is amended -

(a) in subsection (1), by inserting the words “locally or by
importation,” after “insufficiently worked”;

(b) in subsection (3), by deleting the words “other than to
import” and substituting with “including importation”; and

(c) in subsection (4) by -

(i) deleting the words “not exclude,” and substituting with
the word “fix”; and

(ii) deleting paragraphs (a) and (b) and replacing with the
following-

“(a) the scope and function of the licence;
(b) the time limit which the licencee shall begin to

exploit the patented invention; and

(c) the amount of the adequate remuneration to be paid to the
owner of the patent and the conditions of payment.”

(d) adding new subsections (5) to (9) immediately after subsection
(4) as follows -

“(5) If the invention claimed in a patent (later patent) cannot be
exploited in the country without infringing a patent granted on the
basis of an application benefiting from an earlier filing or , where
appropriate, priority date, the Registrar upon the request of the
owner of the later patent, may issue a non-voluntary licence to the
extent necessary to avoid infringement of the earlier patent.

4 The Industrial Property (Amendment) Act 5 of 2009

5th November, 2009

(6) Where a non-voluntary licence is issued under subsection (5)
the Registrar upon the request of the owner of the earlier
patent, shall issue a non-voluntary licence in respect of the later
patent.

(7) In the case for a request for the issuance of a non-voluntary licence
under subsections (5) and (6), subsection (3) shall apply mutatis
mutandis with the proviso that no time limit needs to be fixed.

(8) In the case of a non-voluntary licence issued under subsection (5),
the transfer may be made only with the later patent, or, in the case
of non-voluntary licence issued under subsection (6), only with
the earlier patent.

(9) The request for the issuance of a non-voluntary licence shall be
subject to payment of the prescribed fee.”

10. The Principal Act is amended by adding the following new section 16A
immediately after section 16 -

“16A. Emergency Measures
(1) The Minster may decide that, even without the agreement of the

owner of the patent, a Government agency or a third person
designated by him may exploit a patented invention where the-
(a) public interest, in particular, national security, nutrition,

health or the development of other vital sectors of the
national economy so requires; or

(b) court has determined that the manner of exploitation , by the
owner of the patent or licencee, is anti-competitive, and the
Minister is satisfied that the exploitation of the invention in
accordance with this subsection would remedy such practice.

(2) The exploitation of the patented invention shall be limited to the
purpose for which it was authorised and shall be subjected to the
payment to the owner of an adequate remuneration taking into
account the economic value of the Minister’s authorisation, as
determined in the said decision, and, where a decision has been
taken under subsection 1(b), the need to correct anti-competitive
practices.

(3) The Minister shall make his decision after hearing the owner of
the patent and any interested person if they wish to be heard.

(4) A request for the Minister’s authorisation shall be accompanied
by evidence that the owner of the patent has received, from the
person seeking authorisation, a request for a contractual
licence, but that person has been unable to obtain such a
licence on reasonable commercial terms and conditions and
within a reasonable time.

The Industrial Property (Amendment) Act 5 of 2009 5

(5) Subsection (4) shall not apply in cases of –
(a) national emergency or other circumstances of extreme urgency

provided, that in such cases the owner of the patent shall be
notified by the Minister’s decision as soon as reasonably
practicable;

(b) public non-commercial use; and

(c) anti-competitive practices determined as such by the Minister.

(6) The exploitation of a patented invention in the field of semi-conductor
technology shall only be authorised either for public non-commercial
use or where the Minister has determined that the manner of exploitation
of the patented invention, by the owner of the patent or his licencee, is
anti-competitive and if the Minister is satisfied that the issuance of the
non-voluntary licence would remedy such practice.

(7) The authorisation shall not exclude the-

(a) conclusion of a licence contract by the owner of the
patent;

(b) continued exercise, by the owner of the patent, of his
rights under section 13(1); or

(c) issuance of a non-voluntary licence under section 15.
(8) Where a third person has been designated by the Minister, the

authorisation may only be transferred with the enterprise or business of
that person or with the part of the enterprise or business within the
patented invention that is being exploited.

(9) Where the exploitation of the invention by the Government agency or
third person designated by the Minister is authorised under subsection
(1), it shall be predominantly for the supply of the market in Tonga and
this authorisation shall not apply where the exploitation is authorised
under subsection (1) (b).

(10) Upon request of the owner of the patent of to the Government agency
or of the third person authorised to exploit the patented invention, the
Minister may, after hearing the parties vary the terms of the decision
authorising the exploitation of the patented invention to the extent that
changed circumstances justify such variation.

(11) (a) Upon the request of the owner of the patent, the Minister shall
terminate the authorisation if he is

(b) satisfied after hearing the parties that the circumstances which
led to his decision have ceased to exist and are unlikely to
occur or that the Government agency or third person
designated by him has failed to comply with the terms of the
decision.

(b) Notwithstanding paragraph (a), the Minister shall not terminate
the authorisation if he is satisfied that the need for adequate
protection of the legitimate interests of the Government
agency or third person designated by him justifies the
maintenance of the decision.

11. Section 24(3) of the Principal Act is amended by inserting the words “or
in any other country” after the word “Tonga”;

12. Section 26(2)(e) of the Principal Act is amended by-

(a) replacing the semi colon after “enterprise” with a comma; and

(b) adding immediately at the end of the sub-section the following “if
it is well known and registered in Tonga for goods or services
which are not identical or similar to those in respect of which
registration is applied for, provided, in the latter case, that use or
the mark in relation to those goods or services would indicate a
connection between those goods or services and the owner of the
well-known mark and that the interests of the owner of the well-
known mark are likely to be damaged by such use;”

13. Section 27 (2) of the Principal Act is amended by inserting after the
words “his predecessor in title,” the words “in or for any State Party to
the said Convention or any member of the World Trade Organisation,”.

14. Section 28 of the Principal Act is amended by inserting after subsection
(8) the following new subsections-

“(9) All applications filed with the International Bureau for international
registration of a mark or marks in which Tonga is designated for the
purpose of obtaining protection under this Act shall be governed by
the provisions of this Act and its Regulations and the provisions of
the Madrid Protocol and the Regulations.

(10) In the event of conflict between the provisions of this Act and its
Regulations and the provision of the Madrid Protocol and the
Regulation pertaining thereto, the former shall prevail unless the
application of these provisions contravene the underlying principles
of the latter, in which case the latter shall prevail, according to
prescribed procedures ”

15. Section 29(3) of the Principal Act is amended by inserting the words “or
in any other country” after the word “Tonga”.

16. Section 39 (3) of the Principal Act is amended by inserting after the word

“Gazette” the words “, and any other publication approved by him,”.

Passed in the Legislative Assembly this 5th day of November, 2009.

6 The Industrial Property (Amendment) Act 5 of 2009 The Industrial Property (Amendment) Act 5 of 2009 7

(5) Subsection (4) shall not apply in cases of –
(a) national emergency or other circumstances of extreme urgency

provided, that in such cases the owner of the patent shall be
notified by the Minister’s decision as soon as reasonably
practicable;

(b) public non-commercial use; and

(c) anti-competitive practices determined as such by the Minister.

(6) The exploitation of a patented invention in the field of semi-conductor
technology shall only be authorised either for public non-commercial
use or where the Minister has determined that the manner of exploitation
of the patented invention, by the owner of the patent or his licencee, is
anti-competitive and if the Minister is satisfied that the issuance of the
non-voluntary licence would remedy such practice.

(7) The authorisation shall not exclude the-

(a) conclusion of a licence contract by the owner of the
patent;

(b) continued exercise, by the owner of the patent, of his
rights under section 13(1); or

(c) issuance of a non-voluntary licence under section 15.
(8) Where a third person has been designated by the Minister, the

authorisation may only be transferred with the enterprise or business of
that person or with the part of the enterprise or business within the
patented invention that is being exploited.

(9) Where the exploitation of the invention by the Government agency or
third person designated by the Minister is authorised under subsection
(1), it shall be predominantly for the supply of the market in Tonga and
this authorisation shall not apply where the exploitation is authorised
under subsection (1) (b).

(10) Upon request of the owner of the patent of to the Government agency
or of the third person authorised to exploit the patented invention, the
Minister may, after hearing the parties vary the terms of the decision
authorising the exploitation of the patented invention to the extent that
changed circumstances justify such variation.

(11) (a) Upon the request of the owner of the patent, the Minister shall
terminate the authorisation if he is

(b) satisfied after hearing the parties that the circumstances which
led to his decision have ceased to exist and are unlikely to
occur or that the Government agency or third person
designated by him has failed to comply with the terms of the
decision.

(b) Notwithstanding paragraph (a), the Minister shall not terminate
the authorisation if he is satisfied that the need for adequate
protection of the legitimate interests of the Government
agency or third person designated by him justifies the
maintenance of the decision.

11. Section 24(3) of the Principal Act is amended by inserting the words “or
in any other country” after the word “Tonga”;

12. Section 26(2)(e) of the Principal Act is amended by-

(a) replacing the semi colon after “enterprise” with a comma; and

(b) adding immediately at the end of the sub-section the following “if
it is well known and registered in Tonga for goods or services
which are not identical or similar to those in respect of which
registration is applied for, provided, in the latter case, that use or
the mark in relation to those goods or services would indicate a
connection between those goods or services and the owner of the
well-known mark and that the interests of the owner of the well-
known mark are likely to be damaged by such use;”

13. Section 27 (2) of the Principal Act is amended by inserting after the
words “his predecessor in title,” the words “in or for any State Party to
the said Convention or any member of the World Trade Organisation,”.

14. Section 28 of the Principal Act is amended by inserting after subsection
(8) the following new subsections-

“(9) All applications filed with the International Bureau for international
registration of a mark or marks in which Tonga is designated for the
purpose of obtaining protection under this Act shall be governed by
the provisions of this Act and its Regulations and the provisions of
the Madrid Protocol and the Regulations.

(10) In the event of conflict between the provisions of this Act and its
Regulations and the provision of the Madrid Protocol and the
Regulation pertaining thereto, the former shall prevail unless the
application of these provisions contravene the underlying principles
of the latter, in which case the latter shall prevail, according to
prescribed procedures ”

15. Section 29(3) of the Principal Act is amended by inserting the words “or
in any other country” after the word “Tonga”.

16. Section 39 (3) of the Principal Act is amended by inserting after the word

“Gazette” the words “, and any other publication approved by him,”.

Passed in the Legislative Assembly this 5th day of November, 2009.

6 The Industrial Property (Amendment) Act 5 of 2009 The Industrial Property (Amendment) Act 5 of 2009 7

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