National legislations and International treaties recognise the exclusive rights of the owners, and protect these rights against any infringements and unfair competition. 

Iranian patent law differs from the laws of most other countries in several aspects. Hence, an understanding of the legal status of patents in the Islamic Republic of Iran, will assist the foreign owners of inventions and discoveries to safeguard and utilize their unique patent rights effectively in the Iranian market.

A patent is essentially a government grant to a person  for the exclusive right to make, use, and sell his new and useful discovery, design, process, machine, manufacture, or other composition, or, any new and useful improvement on it.

Applying for a patent is not obligatory. But, obtaining of a patent gives the owner (patentee) the right and assurance to take legal action for preventing others from exploiting the patented invention or discovery without his consent.

According to Article 27 of the Law of Registration of Marks and Patents, the following may be registered in Iran:

1- Invention of any novel industrial product.

2- Discovery of new means or application of the existing means in a novel manner for procuring an industrial or agricultural result or product.

Article 28 of the said law lays down that fiscal plans, pharmaceutical formulas and compounds are not patentable. But, for processes related to the manufacture of pharmaceuticals, a patent application can be filed.

In addition, any invention or improvement on an invention disturbing public order or considered to be contrary to morality or public health, can not be patented.

Novelty and usefulness are two essential features that any invention or discovery should possess in order to be registered as a patent.

Any person who initiates an application for a patent and has it granted, is considered as the patentee, unless it is proved by a competent court that the claim to initial discovery and invention is untrue.

It should be noted that if a company hires someone for discovering or inventing something, the respective patent right will principally belong to the employer, not the employee. Two or more holders of inventions or discoveries may apply for a patent jointly.

The inventor or discoverer is required to make written application to the Tehran Office for Industrial Property (patent office) and, together with the necessary fees, file what is known as a "declaration".

This document contains details concerning the name, profession, domicile, and nationality of the applicant and the name and domicile of his patent agent, if any. The subject matter of the invention or discovery, and the duration of validity that the applicant is seeking for the patent, should also be clearly designated.

It is further provided that a written description of the invention or discovery and respective explanatory plans and drawings be attached to the declaration form.

Once due examination of the documents submitted, is completed and the patent office concludes that they comply with the regulations, a patent is then granted in the form of a patent certificate.

Patent Certificate is a permit for exerting exclusive right over an invention or discovery. However, possession of this certificate is not necessarily an indication that its subject matter is novel, genuine or suitable for utility. In addition, the patent certificate does not demonstrate that the patentee is the true inventor or discoverer. Any person is entitled to prove the contrary in court.

Any interested party may refer to the court and request for the cancellation of the patent on the basis that:

1- It is not novel

2- It is unpatentable according to the law.

3- It is purely a scientific method and can not be utilized practically in industry or agriculture.

4- The patentee has not made use of it within five years after the issuance of the patent certificate.

Patents are granted for 10, 15, or a maximum period of 20 years, according to the discretion of the applicant. One of these time spans must be specified in the certificate.

Additions or improvements may later be included and are protectable for the duration of the principal patent.

The inventor or discoverer is authorized to assign or transfer the patent and any legal interest in it to a third party. The patent can also be consigned by through inheritance. The only requirement in this respect is that the assignment or transfer of the patent must be officially recorded and registered.

Obtaining a court injunction is a proper remedy to prevent the violation of any right secured by patent. This is foreseen in the law and compensation of any damages sustained can be sought by the complainant. In the event that the violation falls under the heading of unfair competition, forgery, or fraud, the perpetrator shall face prosecution.

According to Article 30 of the law, any inventor or discoverer who holds an unexpired patent certificate outside Iran, is entitled to apply for a patent in Iran valid for the remaining duration of the original one. However, in the event that a person or firm has utilized the invention or discovery, prior to the foreigner's application, either wholly or partially in Iran or has made preparations to exploit the same, the foreign patentee  will not have the right to stop the operation of the said person or firm.

Different types of documents are required to present by foreigners for obtaining a patent.

It is always advisable to process the application through a skilled patent agent. They usually require the following:

1- Name and address of the applicant.

2- Title of the invention or discovery.

3- Power of attorney duly legalized by the respective Iranian consulate.

4- A certified copy of the corresponding patent certificate (or application, in case of benefiting from Paris Convention provisions)

5- A certified copy of the transferal document, if the applicant is not the original proprietor.

6- Three copies of the related specifications, claims, plans and drawings.

The aforesaid documents must be presented to the patent office within six months from the date of the Iranian application. This period of duration may be renewed only once in the case of a justifiable excuse.

If the patent office refuses patent application due to an insufficiency of documentation, or being contrary to the governing provisions the patent applicant has the legal right  to refer to a competent court, personally or through his lawyer, and ask for the cancellation of the patent office decision.

The Islamic Republic of Iran is a signatory of the International Convention for Protection of Industrial Property (also known as the Paris Convention). Parties to this agreement undertake to grant each other's nationals patent and trademark rights identical to those of their own nationals.

The right of priority is one of the major benefits of the Paris Convention. It allows for a person who has applied for a patent in one of the Convention countries to have the right to apply, within one year, for protection in any of the other Convention countries. These later applications shall be regarded as if they had been filed on the same day as the first application. This provisions is a major advantage for foreigners who wish to register and safeguard their patents in any number of countries, Iran included.
 

TRADEMARK RIGHTS

Iranian law regarding intellectual property recognizes the exclusive right of the use of a trademark only for the person who has registered the mark. The point is clear: if you, whether as a national or a foreigner, wish to have legal protection in the Iranian market and safeguard your firm's name, the registration of your trademark is a must. It helps to prevent the fraudulent marketing of your products or services. Let us now go into details to see how trademark rights are acquired in the Islamic Republic of Iran. 

How is a trademark defined according to Iranian law?

The Law of Registration of Marks and Patents, stipulates that a trademark is any type of logo, design, picture, number, letter, word, seal, wrapper, etc., adopted to identify and distinguish goods and services.

What forms of trademarks are registerable?

 Various types of marks which are chosen for identifying industrial, commercial, or agricultural products and goods can be registered. Service marks are also registerable. The essential requirement is that the mark presented for registration should be distinctive.

Are there any non-registerable marks?

Yes, there are. Article 4 of the Law of Registration of Marks and Patents states that none of the following marks can be registered in Iran:
1- The official flag of the Islamic Republic of Iran; any flag that the government has prohibited to be used as a trademark; in addition to badges, medals and insignia of the Iranian government. 
2- The marks of official institutions such as the Iranian Red Crescent, the International Red Cross, etc.
3- Words and/or phrases creating an impression of official connection with Iranian authorities.
4- Marks contrary to public order and good morals.
5- Marks which have been registered under the name of another person (whether a natural or legal entity) or a mark which so closely resembles an already registered mark that it would cause confusion or deceive ordinary consumers.

Who may apply for the registration of a trademark? 

 All Iranian or foreign nationals who are engaged in economic, commercial and service activities in the Islamic Republic of Iran can apply to register their marks. Persons who have enterprises outside Iran, can also benefit from the Law and register their marks provided the country to which the enterprise belongs, reciprocates the protection of Iranian trademarks by virtue of its domestic regulations or bilateral conventions.

Under what classifications are trademarks registered? 

The applicant is required to specify the category of goods under which he wishes to register his trademark. There are 36 such classifications, divided into seven chapters, in Iranian law. Class 35 is for service marks, and class 36 covers goods not defined in other areas. A trademark shall be registered only in respect of particular goods in particular classes. 

Is the registration of trademarks compulsory in Iran? 

Generally speaking, the registration of trademarks in the Islamic Republic of Iran is optional. But, according to a specially devised act, pharmaceutical products used in medicine or veterinary, canned or packaged foodstuffs, beverages, and cosmetics, whether produced in Iran or imported, must bear a registered trademark. Samples, and products imported for personal consumption are excluded from this regulation.

Where is the application for registration filed?

Applicants desiring to register a trademark should refer in person or through an attorney to the Registration Office for Industrial Property, located in the city of Tehran, and file their request for obtaining a certificate of trademark registration. Applications are published in the Official Gazette; so that interested parties may inspect and, if needed, contest them. The applications are examined for format, content, and consistency in compliance with the relevant rules of registration. If the registrar rejects an application, the applicant may appeal to the court. 

In which cases is the registrar allowed to reject application? 

 According to Article 9 of the Law, the registrar is authorized to reject the application if he realizes that:
1- The mark is contrary to the provisions of the law.
2- The mark has already been registered under the name of another person, or it is so close in appearance, pronunciation, or written form to the registered trademark, that it might deceive ordinary consumers. 

Who may oppose the registration of a trademark? 

Any trademark, whether already registered or being presented for registration, may be contested by the person who claims that it belongs to him, or that the resemblance is so close that it may mislead the ordinary consumer.

Which authority is empowered to consider trademark complaints? 

Any opposition to the registration of a trademark on the grounds of prior use or close resemblance, and/or claims relating to the infringement of a registered trademark may be filed with the General Courts of Tehran. The right to contest a trademark is in force for a period of three years starting from the actual date of its registration. After the lapse of this specific period of time, the registered mark becomes incontestable.

For how long is a registered trademark valid?

As stated in Article 14 of the Law, a trademark's registration will be effective for a period of ten years from the date of filing the application form and may be renewed by the owner for similar periods. If, without a justifiable reason, a trademark has not been used commercially, either in Iran or in a foreign country, by the proprietor or his agent, within a period of three years commencing from the registration date, any interested party may apply for its cancellation. 

Can a trademark be changed or modified?

The proprietor of a trademark has the legal right to change the mark itself or the classification it refers to. However, in order to guarantee continued legal protection, such changes and modifications should be formally registered.

Is the assignment and licensing of trademarks foreseen in the Law of Registration of Marks and Patents? 

Trademarks may be transferred either voluntarily by assignment or license, or involuntarily by death, bankruptcy or liquidation. For taking legal effect, the assignment and licensing of the trademark should be registered and recorded

What legal effects and rights does the registration of a trademark bring into force? 

The registration of a trademark gives the owner of the mark the exclusive right to its use in relation to the goods and services for which it is registered. The proprietor is entitled to take civil legal actions and/or lodge complaints involving legal penalties to prevent third parties from infringing his right of ownership. Remedies may include damages, costs, and an injunction preventing further violations. According to Article 529 and 530 of the Islamic Penal Code (Taazirat), commission of forgery or unauthorized use of registered trademarks shall incur civil liabilities and imprisonment of up to two years. Punishment for the forgery of trademarks of governmental and municipal companies and establishment as well as using such forged trademarks varies from three to fifteen years and from six months to three years of imprisonment respectively.

Is Iran a party to the international agreements protecting the rights of intellectual property?

The Islamic Republic of Iran is a member of the International Convention for Protection of Industrial Property (also known as the Paris Convention).Parties to this agreement undertake to grant each other's nationals trademark and patent rights identical to those of their own nationals. Under the terms of the convention, if a foreign national makes an application for a trademark in his own country and within six months makes a similar application in another convention signatory country (as an example, Iran), the filing date shall be considered the same as that of the original application. This right of priority, in addition to the equality of treatment, is one of the primary benefits of the Paris Convention.

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