B&R Patents & Trademarks in Latin America

Source: Portal de Carga

On may 15th 2012, the FTA between Colombia and the US entered into force. The negotiations of this FTA were characterized by strong discussions on Intellectual Property issues and deep modifications for Colombian IP Law. This is a brief of the most important of these modifications and their implications for our IP market.

Chapter 16th of the FTA, dedicated to IP, is the lengthiest of the agreement, and its negotiations had to deal with profound differences between US and Andean law. Many of the clauses agreed upon will have to be carefully examined and legal disputes will surely arise as these legal systems collide on patent, trademark and copyright issues.

International legal frame.

The first issue regulated by the FTA is the international legal frame for the agreement. Article 16.1 contains an obligation for the parties to approve several WIPO treaties, the Patent Cooperation Treaty, the Trademark Law Treaty, the Patent Law Treaty and the Madrid Protocol; among many others.

These were conditions established by the US, since it is already party to most of these instruments. Colombia has started fulfilling such requirements by approving the Madrid Protocol (which has not yet entered into force) and reforming its regulation on procedures to abide by international standards, mainly through Resolution 21447 of the national PTO. Many other instruments had already been approved by Colombia.

Other conditions set on this section, are the national treatment for all IP protection, the non-retroactivity of the FTA conditions and the voluntary expansion of the protection rules set in the agreement.

Trademarks and distinctive signs.

On this issue, several of the FTA’s rules were already fulfilled by both parties. Modifications on these issues include:

-The requirement for an electronic application system for most procedures, and the creation of a public database for applications and registered trademarks. Resolution 21447 of the national PTO has already adopted many of these requirements in easing the procedures for filing documents through electronic means.

-The permission of licensing without previous registry of the trademark. Such article is conflicted with decision 486 and 291 of the Andean Community; such conflict is yet to be resolved.

-Geographical Indications will not have primacy over trademarks, the first distinctive sign will prevail over the other on a first registered basis. Issues were also raise about the registration of geographical indications as certification or collective trademarks; the FTA states that Colombia and Peru will have to accommodate to such situation, registering G.I. as trademarks when necessary.

Patents.

-The US advocated for an expansion on patent law, increasing the possibilities for what’s patentable. Specifically, the US wanted to make plants, animals, uses of known substances (Second-use patents) and medical treatments patentable. This goal was only partially accomplished, since Colombia and Peru only agreed to make reasonable efforts on patents for plants.

-Rules were established for the “Unreasonable delay in granting a patent”. According to negotiations conducted in 2006, the parties had to ‘restore’ the patent’s time when the PTO Office took more than 5 years in granting or rejecting a patent. Modifications to this agreement, made this article a voluntary measure for both parties since 2007.

This same –softened- rule will be applied to pharmaceutical products when the sanitary inspection was unreasonably delayed in approving or rejecting a product.

-Some agreements remain unclear, such as the one referring to the necessary divulgation of the invention when application for patentability is filed. The standard adopted to determine what is considered to be ‘sufficient divulgation’ is ambiguous and different from both the American and Colombian regulation.

This requirement is established to ensure that the applicant was in ‘full possession’ of the patentable matter at the moment of filing, and to allow other inventors to take advantage of the technical improvements brought about by the patented invention.
Under the FTA, sufficient divulgation will be met when an expert in the same field would consider the applicant to be in possession of the invention at the time of the filing. This is a standard hard to accommodate to both national legislation and its practical application is yet to be seen.

-Other changes to requirements for patentability include the ‘usefulness of the invention’. Colombian regulation required the invention to have an industrial application. The US required the invention to be ‘useful’, even if the use was not yet known. And Andean Community regulations required an industrial application and to be ‘useful’.
The FTA has adopted the American standard, requiring the usefulness of the invention as criteria to establish its industrial application.

-Additional modifications include changes to the grounds for the annulment of patents, exceptions to patent rights, and issues with commercialization licenses when patent rights were violated.

Copyright and author’s rights.

Copyright and Author’s right issues were the most publicized and controversial topics in public forums. Colombia’s legislative reforms to fulfill the obligations of this FTA usually extended protection beyond what was demanded by the bilateral agreement and were faced with strong opposition from citizen organizations and the Academia.

The most important of these modifications are:

-The protection for works when the owner is a corporation was extended to 70 years since the date of publication (20 years more than the Andean Community standard).

-The owner of related-rights will have an exclusive right on the publication of their work through digital means. The same exclusive right is established for the re-transmission of TV signals on the internet (which is a higher protection standard than that of the US).

-The temporal storage in electronic form of copyrighted works may be prohibited by the author. This raises questions about the enforcement of copyright in ‘digital lockers’ such as MediaFire and RapidShare, but it also concerns other services for online storage of files, such as Box, Dropbox, and the recently launched Google Drive. Experience in copyright issues says that these enforcement issues will be neglected or simply impossible to apply (since anybody could be a potential infringer), but Colombia is sure to have a greater pressure from the US to prosecute infringement of copyright through digital means.

-The owners of any economic right in a work, performance or phonogram may freely and separately transfer their rights, and they also have the possibility to actively enforce their rights on the work.
-Regulation is established for technological measures protecting IP rights and including new exceptions allowing the breaking of such measures.

-A presumption was established for litigation, in favor of the person who appears as the owner of the work and the owners of different parts of the work (such as artists, editors and broadcasting companies).

-The obligation to regulate the use of software by the government, making sure that no illegal software is used by government agencies.

Since many of the clauses agreed upon in the FTA are openly opposed to Andean Community regulations, the implementation of the Agreement is sure to be controversial and to raise interesting questions for IP Experts from both countries.

B&R Latin America will be reporting on developments on this FTA, and will advise its clients accordingly. This is a both exciting and challenging issue for this Latin American economy, and will surely impact the Andean Community market on IP.

Sources:
“El tema Propiedad Intelectual las negociaciones del TLC Colombia – Estados Unidos” – Universidad Sergio Arboleda.
Full text of the FTA in English.
Full text of the FTA in Spanish.
“Colombia and the United States: A Successful Trade Alliance” – Embassy of Colombia in Washington D.C.
FTA’s web page of the Ministry for Commerce, Industry and Tourism.

Source: WIPO

On May 7th 2012, the World Intellectual Property Organization -WIPO- has announced the launch of 3 new web-based communication services, designed to improve the management of  international trademark registrations.

The first of these products is the Madrid Real-time Status (MRS):  a tool that provides the status in real time of trademark documents being processed by WIPO.

The second product is the Madrid Electronic Alert (MEA):  a free “watch service” designed to inform anyone interested in monitoring the status of certain international trademark registrations.

And finally, and most notable, is the Madrid Portfolio Manager (MPM):  a web service that allows holders of international registrations and their representatives to access their international trademark portfolios.

Other online services offered include the E-Renewal and E-Payment of fees and a Simulator of the Process for an International Application (Among others)

All of these services make international applications much more user-friendly and help IP Firms to maintain their customers better informed on the status of their applications.

These new web-services are announced shortly after Colombia’s and Mexico’s approval of the Madrid Protocol.

Source: WIPO’s Madrid-related Online Services

Source: Wikimedia Commons

The Office of the United States Trade Representative has released it’s 2012 Special 301 Report.

This document is an annual review of the state of intellectual property rights, protection and enforcement in trading partners around the world. This report is a valuable guide to understand current issues in IP Law and to highlight positive and negative trends on emerging markets.

The report creates a list of priority issues on IP. This year’s  report has mentioned Capacity Building Efforts, focusing on the lack of prosecution and conviction on the ground of IP infringements. The ever growing trends in Trademark Counterfeiting and Copyright Piracy, warning that the markets of pirated and counterfeit goods will soon surpass the sales volume of the licit vendors, and commenting on new ways for transportation and selling of counterfeit products such as the separate shipping of labels and packaging in order to evade enforcement efforts. Piracy over the internet, demanding stronger actions to strengthen legal regimes and enhance enforcement in order to respond to the increased availability of broadband internet connections and the piracy in new mobile devices. The violation of trade secrets and forced technology transfer, expressing the dangers of trade-distortive policies designed to promote ‘indigenous innovation’ through the lack of enforcement of IP rights and the creating of market barriers based on IP disclosures laws. Finally, the report also highlights the government use of software, trademarks and DNS, implementation of WTO TRIPS agreements, WIPO treaties and issues on IP and health policy.

However, this report is notorious for it’s Country Reports, in which US trading partners are sorted into the “Priority Watch List” and the “Watch List”, depending on their progress on IP issues and the vulnerability for US’s IP rights owners in their markets.

As to Latin American countries, Argentina, Chile and Venezuela were listed on the Priority Watch List, alongside Ukraine, Thailand, China and India. Concerns on these countries include inefficiency in Argentina’s judicial system, lack of protection against unfair commercial use and growing copyright piracy on the internet; Chile’s inefficient system for addressing patent issues for pharmaceutical products, unfair commercial use, and to fulfill it’s commitments  under the US-Chile FTA; and Venezuela’s withdrawal from the Andean Community in 2006, and widespread piracy and counterfeiting.

On the watch list, Bolivia, Brazil, Colombia, Costa Rica, Dominican Republic, Ecuador, Guatemala, Mexico and Peru are said to have progressed in protecting IP Rights, but issues on enforcement and internet piracy remain largely neglected.

Read the Full Report here.

Colombia is the first Latin American emerging country to ratify the Protocol on the Madrid Agreement Concerning the International Registration of Marks of 1989.

The Constitutional Court of Colombia has recently declared the comformity of the law No. 1455 of 2011 with the Constitution. Such law ratified the Protocol and provided a new procedure for trademark owners to protect their trademarks in Colombia’s emerging market.

The Court’s decision is the final step in the colombian legislative process and it makes Colombia the second country in Latin America (after Cuba) to approve such treaty. There are 84 contracting parties to the protocol so far, including the European Union, the US, China, Japan and most of the developed and the developing world. The approval of this international instrument was an obligation from the Free Trade Agreement between Colombia and the United States, which will have effect since may 15th of 2012.

This Protocol greatly simplifies the procedures for the international protection of trademarks, while leaving the national tradermark registration procedure virtually intact. Before the Madrid protocol, a trademark owner wishing to protect his trademark in several countries had to apply for registration in every one of the countries, an extremely inefficient and expensive procedure, contrary to a true global economy. Multi-national companies or smaller companies with international expantion plans, had to spend a significant amount of time and resources in this procedure, a huge transaction cost to enter international markets.

Under the Protocol, once an application for a trademark registration has been filed (Or the trademark has been already registered) the applicant or the trademark owner can file an international application. The national office (The Superintendy for Industry and Commerce -SIC- in Colombia) sends the international application to the WIPO’s International Office, which in turn notifies the offices of the contracting parties where protection was requested.

The flexibility of the Protocol allows for the applicant to choose not only the countried in which to protect it’s trademark, but also decide on the level of protection on each one of them. Each national office is free to deny the registry and the expiration by lack of use of a trademark is independent in each national office. Finally, transactions on the trademark can be registered for offices of all the contracting parties, or just selected countries.

This implies a new level of protection for trademark owners and a great reduction in transaction costs for international business.

Note: On previous versions of this post Colombia was referred as the “first latinamerican country to approve the Protocol”. We have modify such assertion to state that it is the first latin american emerging country to do so, since Cuba had already approved the Madrid Protocol.

A recent modification to the internal procedures of Colombia’s PTO has made requirements referring to Patents and Trademarks much easier. SIC’s Resolution 21447 has modified the times, the requirements and the ways in which requirements are presented.

This post is the first showing such modifications in detail.

Colombia’s PTO has established minimum requirements for applications, and the new resolution has modified the consequences for not meeting such requirements.

All requirements before the Superintendency for Industry and Commerce, should at least contain:

• If all the requirements are met:

The official date of  presentation will be the same as the  date of receipt by the SIC.

• If these requirements are not met:

There’s a two month window to fulfill the requirements.

If the requirements are fulfilled within the time frame:  The official date of  presentation will be the same as the  date of receipt by the SIC of the additional documents. And the procedure starts.

If the requirements aren not fulfilled within the time frame: The application will not go on record. The applicant will be notified.

• If these requirements are met, but a less important requirement is missing:

1. The official date of  presentation will be the same as the  date of receipt by the SIC.

2. There’s a two month frame (since the notification), that may be extended once for the same time period. (Priority is not lost).If the requirement is met: The procedure goes on.Is the requirement is not met: The application will be archived.

• If these requirements are not met in applications for the registration of renovations and modifications.

1. The official date of  presentation will be the same as the  date of receipt by the SIC.

2. There’s a two month frame (since the notification), that may be extended once for the same time period. (Priority is not lost).If the requirement is met: The procedure goes on.Is the requirement is not met: The application will be archived.

In Bogotá, Colombia march 16, 2012 the Culture ministers of the Andean Community countries agreed to start the Andean Plan for the Development of Cultural Industries 2012-2015 and gave precise guidelines to advance the proper management, enhancement and social appropriation of the Intangible Cultural material and Heritage.

These decisions were adopted at the First Meeting of the Andean Council of Ministers of Culture and Cultures, held on Friday March 16in Bogota, with the participation of the Ministers of Culture of Colombia, Ecuador and Peru, as well as the vice Minister Intercultural of the Ministry of Culture of Bolivia and vice Minister of Ecuador Heritage Coordinator.

http://www.comunidadandina.org/prensa/notas/np19-3-12.htm