Want to know more about patents & trademarks in Algerian Pharma? Read on! Prepared in association with SAARPE Association, a leading law firm in Algeria, this is an extract from The Pharma Legal Handbook: Algeria, available to purchase here for USD 99.

1. What are the basic requirements to obtain patent and trademark protection?

Patents Ordinance No 03-07 and Trademarks Ordinance No 03-06, both dated of 19 July 2003 and published in the Official Gazette, form the legislative framework for requirements related to patents and trademarks protection in Algeria.

a) Patents

Patent application shall be filed directly with the competent agency or sent by post with acknowledgment of receipt, or any other appropriate means indicating the confirmation of receipt.

The application must include the following documents:

• Request for grant in 4 examples, drawn up on a form provided by the competent agency;
• Description of the invention, claims, drawings, if the latter are necessary for the understanding of the description, and a descriptive abstract whose content does not exceed 250 words, provided in duplicate, both in Arabic and in French;
• Proxy to the legal representative, if the applicant is represented by an authorized agent;
• Priority document, where a priority according to the Paris Convention for Industrial Property is claimed, and a certified copy of the original application within 03 months from the application;
• Assignment of priority right, if the applicant is not the holder of the earlier application claimed;
• Declaration by which the applicant justify his right to the patent;
• Payment receipt or title of payment of the filing and publication fees: 7.500 and 5.000 DZD respectively (approx. 63 and 42 USD), in addition to priority claim fees, if applicable: 2.000 DZD (approx. 17 USD).

The patent validity is of twenty (20) years from the filing date of the application, but is subject to the payment of the registration and maintenance fees: from 5.000 to 18.000 DZD/year (approx. 42 to 151 USD/year).

b) Trademark:

The trademark right is acquired by registering it with the competent agency. The registration of a trademark has a validity of ten (10) years with retroactive effect to the date of filing of the application. Registration may be renewed for consecutive periods of ten (10) years starting on the day following the expiry date of the previous period.

Except for theft, the trademark belongs to the person who first fulfilled the conditions required for the application or who first validly invoked the earliest priority for his deposit within the meaning of the Paris Convention.

The application for registration of the trademark must include:

• Registration request in 3 examples, drawn up on a form provided by the competent agency;
• Reproduction of the trademark whose dimensions do not exceed the scope provided for this purpose in the official form. Where color is claimed as a distinctive and constitutes a feature of the trademark, the applicant must attach reproductions in color to the application;
• Clear and complete list of products and/or services covered;
• Proxy to the legal representative, if the applicant is represented by an authorized agent;
• Priority justification document, if applicable.
• Payment receipt or title of payment of the filing and publication fees: 14.000 to 15.000 DZD (approx. 118 to 126 USD) and 2.000 DZD per class of products and/or services covered (approx. 17 USD/class), in addition to priority claim fees, if applicable: 1.000 DZD (approx. 9 USD).

On 31 October 2015, Algeria has acceded to the Madrid Protocol for international trademark protection, which is now effective across the entire Madrid system. Therefore, trademark owners in Algeria benefit from a full access to the territories covered by the Madrid Protocol.

To achieve that, a request for extension of the trademark protection to designated countries is to be submitted with the national competent agency by paying a national fee of 4.000 DZD (approx. 34 USD). A simulation of the total amount to be paid is subsequently communicated to the applicant. If the latter decides to continue the procedure, he must express this to the national competent agency that will fill the appropriate form and send it to WIPO accompanied by the trademark registration or the basic application (national), containing reproduction of the trademark object of the request.

2. What agencies or bodies regulate patents and trademarks?

The nationally competent agency for patents and trademarks protection is the Algerian Industrial Property National Institute (“INAPI” – Institut National Algérien de la Propriété Industrielle), which is a Ministry of Industry and Mines institution.

INAPI examines the applications filed, proceeds to the grant of patents and trademark registration certificates when it finds that there are no grounds for refusal, keeps dedicated special registers where all acts are recorded, and publishes the Industrial Property Official Bulletin (“BOPI” – “Bulletin Officiel de la Propriété Intellectuelle”).

3. What products, substances, and processes can be protected by patents or trademarks and what types cannot be protected?

a) Patents:

Under Patents Ordinance No 03-07 dated of 19 July 2003, inventions related to a product or process, which are new, result from an inventive step and which are susceptible of industrial application, can be protected by a patent in Algeria.

An invention is considered as new if it is not included in the state of the art, which consists of everything made accessible to the public by a written or oral description, a use or any other means anywhere in the world before the day of filing the application for protection or the priority date validly claimed for it.
Are not considered as inventions:

• Scientific principles, theories and discoveries, as well as mathematical methods;
• Plans, principles or methods with a view to performing purely intellectual or playful actions;
• Methods and systems of teaching, organization, administration or management;
• Methods of treatment of the human or animal by surgery or therapy, and diagnostic methods;
• Simple presentations of information;
• Computer programs;
• Creations of exclusively ornamental character.

Patents cannot be obtained for:

• Plant or animal varieties and essentially biological processes for production of plants or animals;
• Inventions whose implementation would be contrary to public order or morality;
• Inventions whose exploitation would be detrimental to the health/life of persons and animals, or to the preservation of plants, or would seriously affect the environment protection.

b) Trademarks:

Under Trademarks Ordinance No 03-06 dated of 19 July 2003, are defined as a trademark, any signs susceptible of a graphic representation, in particular words, including names of persons, letters, figures, drawings or images, characteristic shapes of the products or their packaging, colors, alone or in combination between, intended and able to distinguish the products or services of a natural or legal person from those of others.

Are excluded from trademarks registration in Algeria:

• Signs that do not constitute trademarks within the meaning of the aforementioned definition;
• Signs belonging to the public domain or devoid of any distinctive character;
• Signs consisting of the shape of the products or their packaging, if that shape is imposed by the nature or function of those products or packaging;
• Signs contrary to public order or morality, and whose use is prohibited under national law or bilateral or multilateral conventions to which Algeria is a party;
• Signs which reproduce, imitate or contain among their elements coats of arms, flags or other emblems, the name, abbreviation or acronym or official sign or hallmark of control and guarantee of a State or an international organization, unless authorized by the competent authority;
• Signs likely to mislead the public or commercial places as to the nature, quality, provenance or other characteristics of the products or services;
• Signs which consist exclusively or partly of an indication which may give rise to confusion as to the geographical origin of the products or services in question or which, if registered as a trademark, would unduly hamper the use of the geographical indication by other persons entitled to use this indication;
• Signs identical or confusingly similar to a trademark or trade name that is notoriously known in Algeria for identical or similar products of another company, or signs that constitute a translation of that trademark or this trade name;
• Signs identical or similar to a trademark that has already been the subject of an application for protection, or registration for products or services identical or similar to those for which the trademark is registered in where such use would result in a likelihood of confusion.

4. How can patents and trademarks be revoked?

a) Patents:

The forfeiture of a patent occurs in the event of non-payment of the maintenance fees, on anniversary date of the application: from 5.000 to 18.000 DZD/ year (approx. 42 to 151 USD/year).

However, a grace period of six (6) months from that date is granted to the patent holder to pay the taxes due plus a late penalty of equal amount. Nevertheless, at the reasoned request of the holder, made at the latest six (6) months after the expiry of the grace period, the competent department can decide to restore the patent after payment of the taxes due and a restoration tax of 5000 DZD (approx. 42 USD).

Besides that, total or limited nullity to one or more claims of the patent could be pronounced by the competent court, at the request of any interested person:

• If the subject matter of the patent does not meet the conditions of
  patentability;
• If the description of the invention does not satisfy the disclosure requirements of the invention;
• If the claims of the patent do not define the expected protection;
• If the same invention was the subject of a patent in Algeria following a previous application or benefiting from an earlier priority.

When the decision of nullity has become final, the most diligent party shall notify it to the competent agency (“INAPI”) which proceeds to its recording in the patents register and its publication in the Industrial Property Official Bulletin (“BOPI”).

b) Trademarks:

The competent court could revoke the registration of a trademark:

• at the request of the competent department (“INAPI”) or an interested third party, if one of the grounds for exclusion arises after registration and still exists at the time of the revocation decision. However, the registration is not revoked when the trademark has acquired distinctiveness after registration;
• at the request of an interested third party, if the trademark has not been used.

The exercise of the right conferred by the registration of a trademark is subject to the genuine use of the trademark on the products or their packaging, or in relation to the services which the trademark serves to distinguish. Failure to use will result in the revocation, except in the following cases:

• When the defect of use does not last more than three (3) years uninterrupted;
• Where, before the expiry of that period, the holder furnishes proof that serious circumstances justify the lack of use; in this case, an extension of time not exceeding two (2) years is granted.
• If the conditions set out are only met for some of the products or services for which the trademark is registered, the revocation of the trademark extends only to those products or services.
• The final judicial decision pronouncing the revocation of the trademark registration is to be recorded by the competent agency (“INAPI”) on the trademarks register and is published in the Industrial Property Official Bulletin (“BOPI”).

5. Are foreign patents and trademarks recognized and, if so, under what circumstances?

a) Patents:

Algeria is a signatory to the Patent Cooperation Treaty (PCT) that entered into force in the territory on 8 March 2000. According to Patents Ordinance No 03-07 dated of 19 July 2003, a patent application to which an international filing date has been granted under the PCT, and which indicates Algeria as a designated State for the purpose of obtaining a patent, will be considered as a valid application as long as it has been filed with the competent agency (“INAPI”), and the relevant date for that application will be the international filing date.

Under provisions of Patents Ordinance No 03-07, applicants domiciled abroad have to be represented at the competent agency (“INAPI”) by a legal representative chosen among authorized agents whose names are published on the agency website.

b) Trademarks:

Algeria has signed the Madrid Agreement since 5 July 1972, and has acceded to the Madrid Protocol for international trademark protection on 31 October 2015. Therefore, trademarks registered through the international application are recognized in Algeria, and the validity of the registration for a period of ten (10) years applies with retroactive effect from the international filing date.

Under provisions of Patents Ordinance No 03-06, applicants domiciled abroad have to be represented at the competent agency (“INAPI”) by a legal representative chosen among authorized agents whose names are published on the agency website.

6. Are there any non-patent/trademark barriers to competition to protect medicines or devices?

No, there is no any non-patent/trademark barrier to competition to protect drugs or medical devices.

Regulatory authorities with jurisdiction over drugs, biologics and medical devices in Algeria do not confer exclusive right to benefit from the proprietary pre-clinical and clinical data for a set period of time, also called Regulatory Data Protection (RDP), to innovative companies at the moment of granting the market authorization, and generic manufacturers are allowed to rely upon those data to obtain approval of their abbreviated applications.

7. Are there restrictions on the types of medicines or devices that can be granted patent and trademark protection?

No, there are no restrictions to any type of drugs or medical devices that can be granted patent and trademark protection, without compromising patentability conditions and trademark definition provided in Patents Ordinance No 03-07 and Trademarks Ordinance No 03-06, respectively.

However, a compulsory license may be granted at any time by the Minister of Industry and Mines (whose ministerial department is in charge of Industrial Property) to a State service or a third party designated by the Minister, for a patent application or for a patent, in one of the following cases:

• Where the public interest, in particular national security, nutrition, health or development of other sectors of the national economy so require, and in particular where for patented pharmaceutical products, excessive prices or discriminatory in relation to average market prices are fixed;
• When a judicial or administrative body judges that the manner in which the patent holder or his licensee exploits the invention is anticompetitive, and when the Minister of Industry and Mines is convinced that the exploitation of that invention through a compulsory license will remedy this practice.

8. Must a patent or trademark license agreement with a foreign licensor be approved or accepted by any government or regulatory body?

a) Patents:

The clauses contained in the license agreements are deemed to be invalid insofar as they impose on the licensee at the industrial or commercial level, limitations constituting an abuse of the rights conferred by the patent having an effect detrimental to competition in the domestic market.

According to Patents Ordinance No 03-07 dated of 19 July 2003, valid patent licenses have to be duly recorded on patents register before the competent agency (“INAPI”).

b) Trademarks:

The license agreement must, on pain of nullity, contain the trademark, the duration of the license, the products or services for which the license has been granted and the territory for which the trademark may be affixed or the quality of the products manufactured or services provided by the licensee.

According to Trademarks Ordinance No 03-06 dated of 19 July 2003, valid trademark licenses have to be duly recorded on trademarks register before the competent agency (“INAPI”).