2014/02 > French Polynesia and IP: after the first step regarding the recognition of existing rights, now the second step
As we previously announced (IP News of September 2013), French industrial property rights can now be protected in French Polynesia by a procedure of recognition that is either “automatic” (for rights whose filing date is prior to 3rd March 2004) or “optional” (for rights having a filing date between 3rd March 2004 and 31 August 2013). However, concerning renewals and first filings of IP rights in French Polynesia, nothing was provided until now.
This is henceforth done through an Agreement signed between the French Polynesian government and the French PTO (“INPI”), entitled “Extension Agreement giving effect in French Polynesia to industrial property titles submitted, renewed or extended before the INPI since 3rd March 2004”.
This Agreement came into force on 1st February 2014.
As from 1st February 2014, it is now possible to claim protection in French Polynesia at the time of first application, or renewal of IP rights at the French PTO.
Moreover, the “optional recognition” that the owner of an IP right can obtain, is now available for any application or renewal that was made between 3rd March 2004 and 31st January 2014 (and not only for applications that were filed between 3rd March 2004 and 31st August 2013).
Therefore:
1) Recognition of IP rights issued by the French IP Office and having a filing date prior to 3rd March 2004 is automatic, with no need for any formality.
2) A “declaration of recognition” can be made for any application or renewal of IP rights that was made between 3rd March 2004 and 31st January 2014, so as to obtain, for the IP rights, the same effects in French Polynesia as in Metropolitan France.
3) As from 1st February 2014, if the IP right owner wants to obtain protection in French Polynesia, any application or renewal of a French IP right filed before the French PTO has to be supplemented by a demand for extension to French Polynesia, in order to benefit from the same effects as in Metropolitan France, and a special fee must be paid. Apart from the “recognition” procedure, the Polynesian authorities do not handle any of these formalities directly.
The table below sums up the different situations. Although these situations can cumulate, it has to be noted that the “declaration of recognition” must be filed before any demand of extension to French Polynesia is made for IP rights to be renewed or maintained, which is in practice difficult to achieve for IP rights having an expiration date coming soon in 2014.
|
Automatic recognition |
Optional recognition |
Optional extension as from 1st February 2014 |
|
| Before 3rd March 2004 |
x |
– |
– |
| Since 3rd March 2004 |
– |
For applications filed prior to 1st February 2014, and renewals |
For first applications, and renewals |
It is important to note that the expiration date of any right extended to French Polynesia remains governed by French law .
The IP rights concerned by these provisions are patents, utility certificates, topographies of semiconductor products and French trademarks and designs. On the other hand, complementary certificates of protection (CCP), community trademarks and designs, as well as international industrial property titles are excluded.
A potential third step could now consist in providing for direct submission of IP rights before the Polynesian authorities in order to obtain protection on French Polynesian territory only.