Patent Services
We at MIRAK IP serve local, regional and international clients including companies involved in complex technologies, such as communications, manufacturing and service industries. In representing these clients, we usually deal with virtually every issue associated with identifying patentable innovations, securing and protecting patents and enforcing patent rights.
We have obtained patents in almost every area of technology, including digital and analogue electronics, computer software and hardware, complex mechanical and electrical devices, chemical processes and compositions, pharmaceuticals, biotechnology, warfare technology, medical equipment, audio and video processing equipment and computerized systems and communications.
Our firm provides a wide variety of patent protection and enforcement services.
Examples of our patent services are:
Filing and prosecuting patent applications.
Analyzing prior art and rendering patentability opinions.
Preparing and filing patent appeal briefs.
Rendering legal opinions concerning the validity and infringement of patents.
Developing and managing global patent portfolios.
Providing expert testimony in patent litigation lawsuits.
Counseling patent owners regarding strategies and likelihood of success.
Preparing cease and desist letters in the event of patent infringement and resolving infringement situations to a successful conclusion.
Litigating patent and related IP disputes.
Preparing and negotiating patent license agreements and assignments.
Patents protect new inventions. For an invention to qualify for patent protection it must be 'novel' in the sense that it has not been publicly done before and 'inventive', which is slightly more difficult to define, but essentially means 'not obvious in light of what has gone before'.
Certain types of invention are generally excluded from protection by statute, such as scientific theories or literary works, but other forms of protection such as copyright or trademarks might be available. A patent should be filed before any non-confidential disclosure of the invention.
Patents are territorial rights. For example, a Iranian patent covers only the Iran.
Once granted, a patent provides its owner with the exclusive right to make, use, sell or import the invention without permission. A patent can last for up to 20 years from filing, but must be renewed each year by payment of renewal fees.
The patent system is complex and can be quite expensive, particularly if protection in foreign countries is required as translation costs and foreign attorney fees can quickly add up. Nevertheless, we aim to minimise the cost of applying for patent protection so you can afford as wide a scope of protection as possible within your budget.
Because of the complexity of the patent system we strongly recommend that you seek professional advice at the outset so you can get an idea as to whether your invention is likely to be patentable and some estimate of the costs that will be incurred if you decide to file an application
PATENTS OF INVENTION
FILING
Applicant: any person, Iranian or foreigner, who first applies for the registration of an invention in his name, be it either the inventor, his assignee, a company, or a firm, either directly or through an authorized attorney.
Kinds of patents: independent patents, conventional patents and patents of improvement or addition.
Novelty: includes anything that has not been anticipated by prior art and would not be obvious to a person having ordinary skills in the art. Prior art is everything disclosed to the public, anywhere in the world, through written or oral publication, by practical use or in any other way.
Examination: no preliminary examination, with the exception of independent patents, referred to a special commission within the Industrial Property Office.
Exceptions to protection: Discoveries, scientific theories, mathematical methods and works of art; schemes, rules or methods for doing business, performing mental or social acts; methods for treatment or diagnosis of human or animal diseases; genetic resources and genetic components comprising the same, as well as biological processes for the production of the same; anything that has been already anticipated in industries and techniques. Those inventions the commercial exploitation of which would be contrary to Islamic rules, public order or morality shall not be patentable. Priority: according to the Paris Convention.
Requirements (to be sent to resident agent for filing of application):
1 - Power of attorney, legalized up to the Iranian Consulate;
2 - 3 sets of specifications and claims (in English) and drawings, if any;
3 - Whenever foreign priority is claimed, a certified copy thereof, together with an English translation.
Note: preferably all documents must be presented at the time of filing, but a two-month delay is accorded for foreigners to submit the necessary documents. This grant of two-month respite may be requested only once.
Priority assignment: whenever applications occur, based on foreign priorities filed in the name of a different applicant than that indicated in the new application in Iran, a priority assignment or copy thereof, as filed abroad, legalized up to an Iranian Consulate, should be submitted to the Registrar.
GRANTING, PROTECTION
Beginning of protection: from date of filing the application. If priority is claimed on the basis of foreign application, the priority rights are as prescribed by the Paris Convention. Duration: twenty years. Extension of duration: not possible.
Annuities: the first annual tax is paid at the moment of filing. Subsequent payments must occur on/or before the anniversary of filing, or per anticipation, six-month grace being allowed for late payments, with 50% fine.
Validation of invalidated patents: not possible.
Marking of goods: not compulsory.
Working: whenever an invention is not exploited or the products produced thereby not sold in the country, it is advisable to effect nominal working by publication of a notice in the local press, both in Persian and in English, offering a license of use thereof within five years after registration, in order to avoid a possible cancellation action. Such procedure can be repeated as often as once a year thereafter or at any rate every five years at the anniversary date of registration. This formality serves as a proof in case of cancellation action brought by any interested third parties for lack of exploiting the invention. Infringement - penalties: infringement and unfair competition cases of patents in Iran can be pursued according to penal regulations.
MODIFICATION OF PROTECTION AFTER GRANTING
Change of name: it is likewise compulsory to record the change of name at the Registration Office, by submitting a certificate of change of name emanating either from the foreign registration Office or the Chamber of Commerce (in excerpt), duly legalized at the Iranian Consulate, accompanied by a power of attorney from the new owner, legalized as well, and the original Letters Patent for endorsement.
Assignment: it is compulsory to record assignments of each patent at the Registration Office;
The documents required are:
1- Power of attorney from the assignee, legalized up to the Iranian Consulate
2- deed of assignment, signed by the assignor and assignee before a Notary Public and legalized up to the Iranian Consulate and the original Letters Patent for endorsement.
Licenses: any patentee may grant a license of use of his invention provided he records same at the Registration Office;
The documents needed are:
1- The license agreement signed by both parties and legalized up to the Iranian Consulate.
2- A power of attorney from the licensor, legalized as above.
Nullification: any interested party may refer to the Tehran Court and apply for the cancellation of the Letters Patent, if the invention is not a new invention, or if the patent has been issued contrary to the provisions of the Law.