By Wagdy Sawahel for Intellectual Property Watch
Iran has adopted a new law on the “registration of inventions, industrial designs and trademarks” in a bid to come to grips with the fast-paced changes in the world of trade and industry and developments in the area of intellectual property.

The new law was first passed by Parliament on 23 January; the government published it on 20 April and it is being temporarily implemented for five years effective from 5 May.

Mohammad Taeb, Iranian technology transfer expert and former coordinator of the research and human capacity development programme at the Institute of Advanced Studies at the Japan-based United Nations University, told Intellectual Property Watch, “Although Iran’s earlier 77-year-old Law of Registration of Marks and Patents, first passed in 1931, had many amendments, it was out of date, obsolete, and very loose.”

Taeb added, “This progressive Iranian law is the result of studying similar laws in other countries and international laws governing protection of intellectual properties as well as a long public debate stemming from the need to provide protection to intellectual property, channel the potential of the private sector to the innovation sector, and support science and technology development in the country.”

Iran sees itself as a new world leader in science, standing 11th in mathematics, 13th in mechanics, 15th in polymer science, 19th in chemistry, 22nd in chemical engineering and 32th in physics in the world rankings of the scientific fields, respectively, the country’s Science Minister Mohammad Mehdi Zahedi announced in December.

It ranked 26th in published articles on nanotechnology in 2007, first among the Islamic countries. Iran published about 9,000 Institute for Scientific Information papers in international scientific journals in 2007, showing a 17 percent growth rate. And its national academic network is the largest scientific network in the region, linking 230 scientific centres in 39 cities through a data portal and about 18 science and technology parks.

Iran also is spearheading an agricultural biotechnology network to connect national biotechnology institutes, researchers, scientists, engineers, and policymakers from member countries of the Economic Cooperation Organization (ECO) and promote the continuous exchange of knowledge and research results.

In a bid to promote developing nation cooperation in science, manufacturing, technology, and industrial innovation, Iran, in cooperation with the United Nations Industrial Development Organization (UNIDO), plans to set up a UNIDO Centre for South-South Industrial Co-operation in Tehran. It will lead inter-Islamic networks of nanotechnology, virtual universities and science and technology parks to strengthen research capacity, science education and innovation-based industries in the 57 member countries of the Organization of the Islamic Conference (OIC), and has proposed the establishment of an Asian scientific research and technological institute in Tehran.

Iran Readies for International Participation

Taeb pointed out that “the new law has taken steps to address points that have been the subject of extensive international debate” related to the establishment of a universal patent treaty, and the World Trade Organization Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS). The steps in the new law include “advancement in biotechnology, protection of traditional knowledge, and protection of public interest against excessive intellectual property protection and at the same time it is trying to harmonise itself with the international agreements on IPR with the objective of preparing for eventual participation in the WTO,” he said.

The debate so far has resulted in the World Intellectual Property Organization (WIPO) Patent Cooperation Treaty (PCT) and Substantive Patent Law Treaty, but none has been able to address substantive issues, he said. Those treaties are focussed largely on procedural matters such as filing, searches and examinations, and differences in substantive issues between developed and developing countries remain. Taeb said in his view, the divide is too wide to harmonise national patent laws to provide a minimum standard for IP protection.

“It may not be possible to agree on an extensive universal law of patent,” he said. Some areas of disagreement include: Definition of prior art, public interest issues (such as patents on HIV/AIDS drugs), grace period, novelty (what constitutes being novel, for example, are genetic resources novel), inventive step (which he said is essential to define to differentiate an idea from traditional knowledge), industrial applicability, interpretation of claims, and sufficient disclosure.

The Iranian law has attempted to harmonise itself with existing laws and practices to the extent possible, he said. But there are some fundamental differences that cannot be removed, such as nullifying IPR protection when a public interest matter arises.

According to Taeb, the new law regards invention as products or processes and in either case, exclusive legal protection for twenty years is provided to the owner of the invention to use and market it in Iran on condition of paying an annual fee for maintaining the legal protection.

Iranian law ensures that legal protection offered to any product- or process-invention does not deny the use of the same protected invention for scientific research in other areas.

The law has given serious consideration to preventing misuse of intellectual property against public interest. For example, knowledge of diagnosis and treatment of human and animal illnesses is not eligible for protection; similarly genetic resources and their parts are not considered as an “invention” and hence are not eligible for protection.

In cases wherein the public interest with respect to national security, nutrition, hygiene or development of vital economic sections of the country is concerned, or use of the invention by the owner runs contrary to free competition, the government may disregard the accrued rights of the holder of the patent against payment of fair compensation, according to a copy of the law. The law is available here (in Farsi).

The law recognises traditional knowledge and excludes it from claims for patent registration. It also gives serious consideration to ethics and does not protect anything that runs against public morals.

In cases of IP infringement, the law introduced civil and criminal penalties including compensation of damages to the holder of the IP right as well as cash penalty ranging from 10,000,000 rials (about US$1,000) to 50,000,000 rials (US$5,000) and/or prosecution or imprisonment from 91 days to six months.

If there is a conflict between provisions of the new law and those of international conventions to which the government is a signatory, the latter would take precedent.

“This is very important for harmonising Iranian IPR law with internationally accepted practices.” Taeb said.

Iran is signatory to the International Convention for Protection of Industrial Property (also known as the Paris Convention) and in December 2003 became a party to the Madrid Agreement and the Madrid Protocol for the international registration of marks.

In October 2007, Iran’s parliament approved becoming signatory to the WIPO Patent Cooperation Treaty, which enables inventors to register their patents in PCT member countries simply by filing a single application with the related national registration authority. All of these agreements are handled by WIPO.

The civil and criminal parts of the law came into effect on 5 May, while the Iran IP office has until 22 January next year to produce implementing regulations for the other provisions.

“We should reserve judgment, as the law will be reviewed after five years for possible amendments,” Taeb concluded. “We should wait to see how far domestic and foreign firms as well as individuals register their inventions in Iran and how far the law protects these intellectual properties in practice.”

Wagdy Sawahel may be reached at info@ip-watch.ch.