Patent Prosecution Highway

The Mexican PTO, the Instituto Mexicano para la Propiedad Industrial -IMPI–, has recently announced the implementation of the Pilot Program for the Patent Prosecution Highway as a permanent cooperation program between the IMPI and the USPTO. This is great news for both Mexican and American patent owners, since they can easily avoid duplicate procedures reducing the time for getting final decisions from the PTO in 2700%. From aprox. 3 years to as low as 30 days for either granting of denying the patent application request. The IMPI also estimates that the approval rate of PPH Patent Applications is of 90%, compared to a 50% chance of granting for regular patent applications.

The USPTO-IMPI Pilot Program for the Patent Prosecution Highway was implemented on February 22^nd 2011, later on it was extended until August 31, 2012 and turned into a permanent program for cooperation between these two PTOs since September the 1^st 2012.

According the Mexican PTO, the PPH enables an application whose claims have been determined to be patentable in the Office of First Presentation (OPP) may undergo an expedited review in the Office of Second Filing (OSP) with a simple procedure at the request of the applicant.  The patent will be easily granted in the OSP “in the same terms in which it was granted by the first office” as long as certain requirements are met in the application.

However, it is very important to keep in mind that, while the PPH greatly reduces the time for getting a patent registration, the applicant will still have to fulfill all the application requirements from both PTOs and will be subjected to national regulations. On the other hand, the PPH has been fully integrated with procedures under the Paris Convention and the Patent Cooperation Treaty, allowing for patent attorneys to easily adapt procedures to their client’s needs.

You can find detailed instructions for PPH applications in this guide published by the Mexican PTO, and the USPTO web page.

This is one of four programs that the PTO has implemented for Patent Prosecution Highways. Other similar agreements with the PTO include the Japanese, the South Korean and the Spanish PTOs. This allows easy technology transfer between the Mexican market and 4 of the historically top countries as to number of applications per year.

Sources:

IMPI

Las Claves del Derecho

Source: B&R Archive

Fast-forwarding updates on IP legislation in Panama

Panama’s government is finally updating their IP legislation to international standards. In the Latin American IP market, Panama is one of the few countries in the region that has not approved the PCT –patent cooperation treaty- and, until recently, it hadn’t embraced the regional trend in updating trademark law with the TLT –trademark law treaty-. It hasn’t approved the Madrid Protocol either. This situation has resulted in a progressive isolation of Panama from the continental IP market, which is especially serious in a country that depends heavily in cross-border trade.

To overcome this issue, the Panamanian government and the national PTO -DIGERPI- have committed to the entering into force of 3 important international instruments, for the same date: September the 7th, 2012.

As of that day, the PCT, TLT and the Budapest Treaty (On patent procedures and microorganisms) will enter into force in Panama; forcing the PTO and the Congress to make drastic and necessary efforts to update their IP legislation and to ease procedures, adjusting to international and regional standards.

We will post more on this issue as Panama starts to fulfill the obligations acquired under these treaties, and we welcome such step forward in promoting a homogenized and coherent regional IP market.

Learn more on this issue here

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.

Chile: the Chilean government studies the possibility of make a change to the Law No. 19.039 on Industrial Property.

The Chilean government trough the Ministry of economy, development and tourism, and the sub secretarial of economics and small business, the past days, has issued the possible amend to the Law No. 19.039 on Industrial Property (Consolidated Text by Decree-Law No. 3).
The Proposal text amend pretends to harmonize the Chilean legislation with the Trademark Law Treaty (TLT), ratified by the country and published in the Official Gazette on August 5, 2011 (Accession, may 5, 2011 and entry into force August 5, 2011) and the patent cooperation treaty( in 2009 Chile became the 140th contracting state of the Patent Cooperation Treaty (PCT) when it deposited its instrument of accession at WIPO on March 2 and the teatry enter into force for Chile on June 2, 2009.).
In general terms the amend 1) extends the protection to the intellectual property rights, throught the creation of new categories 2) improves protection tools and 3) expedites the procedure for the obtainment of an Industrial Privilege in trademark and patents, essentially through the limitation of the unnecessary procedural stages.
The minister of economy Pablo Longueira and the director of The National Institute of Intellectual Property (INAPI), Maximiliano Santa Cruz, consider that it is necessary a new law to attract investments, generate more jobs, and spur additional research and development.
Since March 09, and until March 29, 2012 it is available also, in the web site of the Ministry of economy, development and tourism, a general consult to the interested person who want participate in the creation of the new law.
To read the amend text (only in spanish), it is available in:

http://www.inapi.cl/images/stories/Documentos/aplicac-normativa/Ley-20569.pdf

To view or participate in the consult, this is the link http://consultaciudadana.economia.cl/

The WIPO: International Patent Filings Set New Record in 2011

The past days (March, 5, 2012) was published by the World Intellectual Property Organization (WIPO) its annual audit of Patent Cooperation Treaty (PCT) filings from the last year. The principal date gave with this publication it is related with the growth of the volume of applications filed in the last year, that represents an increase of 10.7% over 2010 and the most important growth rate since 2005. “International patent filings under the WIPO-administered Patent Cooperation Treaty (PCT) set a new record in 2011 with 181,900 applications – a growth of 10.7“

The fastest growth in PCT applications are from China (+33.4%), Japan (+21%), Canada (+8.3%), the Republic of Korea (+8%) and the US (+8%). The United States remained the top PCT filer with 48,596 applications, but also there are a significant increases in applications originating from Japan and China (Japan and China filed 38,888 and 16,406 applications in 2011, respectively)

In Latin America the leader is Brazil with a 17.2% growth, but also have an important growth, countries like Mexico and Chile. In the next Graphic, we can see the international applications in latin American countries.

INTERNATIONAL APPLICATIONS BY LATIN AMERICAN COUNTRIES
Source: B&R Latina::Trademarks & Patents, elaborated with WIPO information

The Patent Cooperation Treaty (PCT), it is an international system for seeking patents on a global scale. This system was adopted through the subscription of a treaty done at Washington on June 19 of 1970 . Actually 144 countries belong to the union according to the WIPO publication of the World Intellectual Property Indicators . Between these States, we can found different Latin-American countries: like Colombia, Chile, Brazil, Cuba, Dominican Republic, Peru, Ecuador, Mexico, and Nicaragua.

The studied of the statistics available in the Wipos website can us say that since 2005, the sum of the number of PCT applications filed by this developing countries and transition economies has been increasing annually.

Within 12 months after the first application, you must to file the application in Colombia. The deadline to present the priority document is 18 months after the first application.

In order to file the national patent application in Colombia we need:

a. Complete identification of the applicant:
- Complete name or corporate name
- Copy of identification document (if a natural person)
- Complete address
- Domicile (Country and City)
- Telephone number and fax
- If the applicant is a corporation it needs same information about the legal representative.
- Same information about the inventors

b. Simple translation to Spanish of the international application, which should have the complete description, claims, any text in the draws, and copy of them, the abstract, and modifications, if there are.
• The claims should be translated as they were initially presented, and as they were modified.

Basic steps in the procedure

Regarding the Utility model patent, please note that the process is the same that invention patent but all deadlines are reduced to the middle and the time for publication is 12 months from the first application