Negotiations have been completed for an additional group of countries to join the European Union. This group comprises: Cyprus, the Czech Republic, Estonia, Hungary, Latvia, Lithuania, Malta, Poland, the Slovak Republic, and Slovenia. Subject to approval by national legislatures and in some cases by referenda of the populace, these countries will become members of the EU on May 1, 2004.

The treaties of accession with the new group of countries include a number of provisions relating to intellectual property.

Patents

Most of the countries joining the EU have already amended their patent laws so as to comply with EU standards and, with the exceptions of Malta and Poland, have become members of the European Patent Convention. It is expected that all countries will have met these standards and joined the EPC before accession to the EU takes effect.

Problems do, however, exist in that, until recently, patent protection was not available for pharmaceuticals in many of the new member countries. This means that for many pharmaceutical products that are still covered by patents in most of the EU, no patent protection was available in such countries at the time that patents were being obtained elsewhere. Normally, the EU’s free flow of goods policy would make it difficult for the patent owner to enforce its patents in one of the current EU countries to prevent import of such pharmaceutical products from one of the new countries in which it had consented to the marketing of the product. When Spain and Portugal joined the EU, a three-year transition provision was provided before that principle was applicable to products marketed in those countries. This time, the transition provision provides that, for as long as a patent or supplementary protection certificate remains in force in one of the current EU countries, that patent or certificate may be enforced to prevent import of products covered by it which were marketed in one of the new countries if at the time when patents were being applied for no patent protection for pharmaceuticals was available in the new EU-member country where the product in question was marketed.

Finally, transitional provisions have been adopted, which vary from country to country, to permit applications for supplementary protection certificates to enable effective extension of the patent term for products whose first marketing was delayed due to the need to obtain marketing approval in the countries that are now joining the EU. This is so even if marketing approval has already been granted for the products that would be covered by such certificate more than the normal six-month period prior to requesting the grant of the certificate.

Trademarks

Existing Community Trademark applications and registrations in effect on May 1, 2004 will automatically extend to the new member states and will not be subject to opposition, cancellation or invalidation on the basis of prior rights in those new member states. However, Community Trademark applications filed after October 31, 2003 will be subject to opposition, cancellation or invalidation on the basis of earlier rights in new member states. Such earlier rights may also be used to prevent the use of Community Trademarks in the new member states.

Designs

The provisions relating to Community Designs are essentially the same as those relating to trademarks in that existing Community Design registrations will automatically be extended to the new member states on May 1, 2004, subject to any pre-existing rights that may exist in them.