Mr. Alvaro Ramirez Bonilla, CEO of B&R Latin America

On Monday, October 22, our firm held the much anticipated conference “The State of Intellectual Property in Latin America”. The event took place at the headquarters of the Colombo-American Chamber of Commerce, in Bogotá, and it was a great success with the local IP community.

That same day, we launched our book “The State of Intellectual Property in Latin America: Legal Trends, Economic Development and Trade”. Both the conference and the book are the results of extensive research conducted by our firm aiming at providing an overview on Trademarks, Patents and closely related issues, such as Research and Development and the behavior of the regional trade blocks.

Here’s the video of some of the most interesting parts of the conference (Available in Spanish Only):

Conferencia: El Estado de la Propiedad Intelectual en América Latina from B&R Latin America on Vimeo.

Conferencia dictada el 22 de Octubre de 2012 en el lanzamiento del libro The State of Intellectual Property in Latin America.

El orador es el Sr. Alvaro Ramirez Bonilla, CEO de la firma B&R Latin America IP. En el evento se expone un panorama general de la situación regional y nacional en temas de Marcas y Patentes.

To learn more about our book and our research projects click here.

Source: Wikimedia Commons

Many of the most important issues in intellectual property in Latin America are the challenges that new technologies pose to old IP laws.  One of these controversial topics is the protection to software, a discussion that has already been held in most developed countries but has been largely neglected in Latin America.

Software or computer programs are understood as the group of instructions written in the form of functions in order to get a computer to perform a specific process. The protection of software depends on its registry, and on the kind of legal protection in each country.

Copyright v. Patenting.

The main debate on software protection, is not on whether if it should be protected, but on how to best protect it. The trends worldwide are divided between copyright protection and patent protection; and, although the object of protection is basically the same, the kind of protection awarded is radically different.

On one hand, copyright protection of computer programs, protects the creation against the replication of the code of a given piece of software, but it does not prevent other authors from writing their own embodiments of the underlying methodologies. The real subject of protection is the code of the program, but in software coding the same process can be achieved through many different ways.

On the other hand, patenting protects not the code of the program, but the function the software is intended to serve. So if a new program is created with a different code but fulfills the same function, there would be patent violation. However, problems arise with patent protection: i) When obvious functions are patented, creativity and innovation are seriously affected; and even open source and open licensed software may be affected. ii) Some of the public interest goals of the granting of patents are not met when software is patented. When a patent is granted, public interest is benefited by the disclosure of the invention, and by the possibility of licensing such invention to create further innovation. With software patents, it is almost never useful for other programmers the disclosure of the protected programs since the code may not be readable or the function may be achieved by other means.

The Current State of Software Protection.

The general trends on this issue are divided between the developed and the developing countries. The US, the European Union and Japan all allow software patenting –admittedly, under different circumstances–; this is probably due to a political agenda looking for the protection of their tech marketplace, especially since these countries gather the most important companies in software development.

Latin American countries, following the rules of the Berne Convention, protect software exclusively through copyright. This protection is usually broad enough to incentive innovation and to ensure appropriate remuneration for the author. However, the patenting of software is an issue still left to be discussed, and proposals in favor of software patenting may arise as the Latin American market embraces new technologies and becomes a software developer.

This a complex and still obscure issue in IP, from B&R Latina we’ll keep on researching on current trends on software protection, and more detailed guides on software protection will be published.

You may subscribe here to get to updates on this and another tech and IP issues.

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.

After a visit to the Ecuadorian Institute of Intellectual Property (IEPI) the past days, the Ecuadorian President, Rafael Correa decided to make changes to the PTO office, because he considers that this institution need modernization to can offer a better service to the citizens.

The visit was done the February 23, 2012, and the president said that he found a big failure in the operation of the institution and to correct this, he proposed a new amend law.

The changes will be related with the access to priority medicines, a matter of public interest, the establishing procedures for issuing compulsory licenses, and the reinforcement to the copyright protection.
Currently the Ecuadorian Institute of Intellectual Property (IEPI) is the public agency in Ecuador, whose function is to ensure on behalf of the Ecuadorian State Intellectual Property Rights established in the Law, as in treaties and conventions. This institute is in charge of the processing of registration application, registration or granting of rights, trademarks, trade name, slogan, appellation of origin, patent rights,industrial designs and utility models.

The Colombian Government has presented a bill to the parliament that limits Internet Service Providers liability.  This project basically is a copy of the Digital Millennium Copyrights Act, and is part of the new regulations that Colombia is adopting to fulfill with its commitments derived from the Free Trade Agreement signed with the United States.   Colombia has approved the treaty but the American Congress hasn’t.