نشریه پژوهش های حقوق تطبیقی
سال شانزدهم شماره 1 (پیاپی 75، بهار 1391)

Provisional measures such as injunction, securing evidence, freezing injunction and suspension of releas are among the most important legal measures adopted in fair and equitable proceedings related to the intellectual property rights, which have been considered in the third chapter of the World Trade Organization Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs). In the Iranian legal system, this subject is more or less given attention. This study, however, reveals that the new law not only did not put us in a better situation in comparison with the previous law, but also created imperfections and ambiguities that didn’t exist in the previous law. The executive regulations of the new law, sporadically and in a disorderly way have adopted some of the provisions of the previous regulations as part of efforts to remove the existing imperfections and flaws. Actually, it has exceeded the legal limits in some cases. In this research, the author draws a comparison between the new law and the TRIPs Agreement while challenging the new law and its executive regulations. Finally, it sets forth some proposals for amending the existing law.

After many years of regulatory gap in protection of industrial design, the act dated 1386/2007 did not manage to provide an exhaustive definition of industrial design. On the other hand, the registration and appraisal criteria of industrial design were too vague that the executive ordinance to trespass the territory of the regulatory power to, by adding some new laws, decrease the related legal challenges. In this article, after giving a complete definition of industrial design; by critical analysis of the above-mention act, some suggestions are provided in order to decrease the act's deficiencies, including: simultaneous adoption of both novelty and originality in registration of designs, amending the act by adding a suitable definition of originality in the act, and amending the definition of novelty.

In 2007, the Iranian parliament decided to exclude genetic resources, genetic materials and biological processes for their production from the Iranian industrial property regime by adding article 4 (d) to the Patent, Industrial Designs and Trademarks Act. During the ratification, this rule caused controversial debates between proponents and opponents of protecting biotechnology inventions. Proponents of article 4 (d) considered the best choice to wait and see before taking a final decision. This was a wise choice in this context to review the literatures and different national, regional and international approaches on the issues of the patentability of genetic materials and biotechnology inventions enabled Iran to be aware of its specific needs and obligations on the subject; and to create a defensive protection regime of genetic resources. In contrast, opponents of article 4 (d) emphasize that the importance of biotechnology does not decrease and that more than enough information is available today to take an informed decision and tailor an adequate patent law applicable in this field. Concerning such a challenge, this paper analyzes the main approaches of the patent regimes with the goal of establishing a balanced regime on protection of biotech inventions as well as protection of genetic resources.

One of the frequent matters in Iranian industrial property law is the problem of provisional order. Nevertheless, some of the phrases applied in the regulation confuse judges in taking injunctional measures. For example, when the seizure of violating goods is for the purpose of provisional order, or which court has the local competent when the subject matter of the order is situated out of Tehran jurisdiction? This article seeks to answer the questions arisen from vague points of the matter in Iranian law in order to release judges from the confusion and give suggestions for next reformation of the law.

Although the developing countries have recognized the principle of patent protection and bound the related norms but they followed the public policy approach and accepted these norms in the light of public interest and developmental needs. So they always contemplate the flexibilities of patent rights but the question is that what mechanisms and policies they should apply whilst being bound over to international instrument has been accessed to the mentioned aims. For the sake of this paper, the means of exception is the exceptions and limitations provided in the articles 15 and 17 of the registration of patent, trade mark and industrial design Act. In this article, after discussing the concepts of the mechanism and tools provided in the mentioned articles, an attempt is also made to illustrate the efficiency of the mentionsed tools. However, the pre-register exception, as has been provided in the article 4, is another topic, which should be considered separately. In the meanwile, just some general norms and standards in the evaluation of the legitimacy of the following limitation with special reference to experimental use and personal use of patent will be illustrated and some other mechanisms in this area such as exhaustion of rights and compulsory licenses require another contemplation.

Restitution of earned profit by infringers is a way of remedy for intellectual property damages that is based on the rule of preventing unjust enrichment and has been predicted by some I.P. pioneering countries as the guarantee of infringement of I.P rights. The plaintiff may require the above-mentioned remedy instead of, or beside the lost profit. It is an appropriate way to compute the remedy if it does not cause unfair increase in remedy. According to the criterion, the plaintiff will be entitled to the restitution of all profit due to transactions if the loss is proved to have been made, unless the defendant proves that all or part of the profit was earned due to other factors excluding infringed I.P. rights. Iranian I.P. rules have not foreseen such criterion, however, considering the acceptance of preventing unjust enrichment rule in religious jurisprudence and law-among them the subject of vindication that allows the restitution of properties & assets faultlessly-it can be concluded that the right holder (plaintiff) can undoubtedly return the profit made by the infringer through the infringement of I.P. rights.

The patent, industrial designs and trademarks law and its implementing regulations lack specific provisions regarding the mortgage of intellectual property, Therefore, security of these kinds of properties should be analyzed within frame work of civil law. Article 774 of Civil Law stipulates that mortgaged property shall be particular object and, consequently, the security of debt and interest is void. Also, in article 772 delivery is considered a condition of validity of mortgage contract. Based on these articles, it is believed that mortgage of intellectual property is void, because these objects are not particular objects and their delivery is disputable. The present paper, through analyzing mortgage regulations and intellectual property, shows nullity of the above assumption and proves that mortgage of intellectual properties dose not have any contradiction with the provisions of civil law. However, for avoidance of any dispute and misinterpretation by courts and lawyers, it suggests that mortgage of intellectual property should be explicitly predicted in the patent, industrial designs and trademarks law till, in addition to coordination of existing regulations with the position of other legal systems, the reasonable expectations of economy, trade and industry are given appropriate response and considerable amount of property and assets are not deprived from the possibility and potentiality of mortgage.