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Applying for a patent

Patentability
What are the criteria for patentability in your jurisdiction?

Patents must comply with Article 14 of Decision 486 in relation to Article 27 of the Agreement on Trade-Related Aspects of Intellectual Property Rights, which provides that patents must be new, involve an inventive step and be capable of industrial application.

What are the limits on patentability?

The following are not patentable:

  • inventions whose commercial exploitation is contrary to public order or morality; however, the commercial exploitation of an invention will not be considered contrary to public order or morality solely because a legal or administrative provision prohibits or regulates its exploitation;
  • inventions whose commercial exploitation may cause substantial harm to the health or life of humans or animals or cause harm to plants or the environment; however, the commercial exploitation of an invention will not be considered harmful solely because a legal or administrative provision prohibits or regulates its exploitation;
  • plants, animals and essentially biological processes for the production of plants or animals, other than non-biological and microbiological processes; and
  • therapeutic, surgical or diagnostic methods of treatment for humans or animals.

To what extent can inventions covering software be patented?

Software is covered under copyright.

To what extent can inventions covering business methods be patented?

Business methods cannot be patented, but they can be registered as copyrights or trade secrets.

Any undisclosed information that a natural or legal person legitimately holds which can be used in any productive, industrial or commercial activity and is capable of being transmitted to a third party is deemed to be a business secret.

To what extent can inventions relating to stem cells be patented?

Stem cells cannot be patented. Article 15 of Decision 486 states that the following cannot be patented: 

“b) all or part of living beings as encountered in nature, natural biological processes, biological material existing in nature or which may be isolated, including the genome or germplasm of any living thing.” (Emphasis added.)

Are there restrictions on any other kinds of invention?

The following are not patentable:

  • inventions whose commercial exploitation is contrary to public order or morality; however, the commercial exploitation of an invention will not be considered contrary to public order or morality solely because a legal or administrative provision prohibits or regulates its exploitation;
  • inventions whose commercial exploitation may cause substantial harm to the health or life of humans or animals or cause harm to plants or the environment; however, the commercial exploitation of an invention will not be considered harmful solely because a legal or administrative provision prohibits or regulates its exploitation;
  • plants, animals and essentially biological processes for the production of plants or animals, other than non-biological and microbiological processes; and
  • therapeutic, surgical or diagnostic methods of treatment for humans or animals.

Grace period
Does your jurisdiction have a grace period? If so, how does it work?

A six-month grace period for the payment of annuities exists where no other deadline has been set.

Oppositions
What types of patent opposition procedure are available in your jurisdiction?

Oppositions may be filed after publication of a patent. Any interested party may file an opposition. Oppositions may be submitted in relation to the name of the patent or against the patent in its entirety, including its claims. 

Apart from oppositions, are there any other ways to challenge a patent outside the courts?

Outside court opposition, nullity actions can be brought before the National IP Service, claiming that:

  • the subject matter of the patented invention does not meet the patentability requirements outlined in the patent claims; or
  • the documentation for registration of the patent was incorrectly submitted.

Criminal charges for infringement may also be filed, which carry a prison sentence of three months to two years.

How can patent office decisions be appealed in your jurisdiction?

Any decision may be appealed in the following order:

  • revocation appeal;
  • hierarchical appeal; and
  • contentious administrative appeal before the Supreme Court.

Timescale and costs
How long should an applicant expect to wait before being granted a patent and what level of cost should it budget for?

Patents are usually granted in between two and four years. Applicants should budget around $1,300 to be granted a patent. In addition, $220 of annuity must be paid from the second year onward. 

Enforcement through the courts

Strategy
What are the most effective ways for a patent owner to enforce its rights in your jurisdiction?

Patent owners should enforce their rights through administrative procedures before the National IP Service.

What scope is there for forum selection?

N/A.

Pre-trial
What are the stages in the litigation process leading up to a full trial?

Litigation applies only for criminal cases, not administrative proceedings (eg, oppositions or nullity actions).

How easy is it for defendants to delay proceedings and how can plaintiffs prevent them from doing so?

Defendants can easily delay proceedings by filing additional notifications and observations, which will in turn increase the other party’s caseload. To avoid this, rights holders must constantly monitor the process. ‘Unauthorised’ payments can usually be made to fast track notifications. 

How might a party challenge the validity of a patent through the courts in anticipation of a potential suit for infringement being issued against it?

Parties can challenge the validity of a patent by claiming that:

  • the object of the patent is not considered an invention under Article 15 of Decision 486;
  • the invention does not fulfil the patentability requirements under Article 14 of Decision 486;
  • the patent was granted for an invention covered by Article 20 of Decision 486;
  • the patent does not disclose the invention in accordance with Article 28 of Decision 486 and, if appropriate, Article 29 of Decision 486;
  • the claims included in the patent are not fully supported by the description;
  • the patent as granted is broader in scope than the original application and requires extended protection;
  • a copy of the access contract has not been filed, where the products or processes for the patent were obtained or developed from genetic resources or products derived from another member country (if applicable);
  • a copy of the document certifying the licence or authorisation to use traditional knowledge of indigenous or local communities has not been filed, where the products or processes for the patent were obtained or developed from such knowledge (if applicable); or
  • the grounds for absolute invalidation according to domestic legislation have been met.

Where the grounds specified above apply only to some of the claims or parts of a claim, invalidation will be granted only in relation to those claims or parts thereof.

Claims or parts of claims that have been declared invalid will be considered null and void from the date on which the patent was filed.

At trial
What level of expertise can a patent owner expect from the courts?

The courts have little experience in relation to patent issues; thus, it is advisable to initiate administrative procedures before the National IP Service, rather than seek court remedies.

Are cases decided by one judge, a panel of judges or a jury?

Cases are decided by a panel of judges and a jury.

If jury trials do exist, what is the process for deciding whether a case should be put to a jury?

Trial juries exist only for criminal proceedings. No juries are available for oppositions or invalidation actions.

What role can and do expert witnesses play in proceedings?

Expert witnesses can be used to verify the state of the art.

Does your jurisdiction apply a doctrine of equivalents and, if so, how?

N/A.

Is it possible to obtain preliminary injunctions? If so, under what circumstances?

N/A.

How are issues around infringement and validity treated in your jurisdiction?

Anyone found guilty of reproducing, plagiarising, distributing, publishing or broadcasting (in whole or in part) a literary, artistic, musical, scientific or cinematic work for profit and without the consent of the rights holder or its licensee will be imprisoned for a term of between three months and two years and be subject to 60 days’ forced labour.

The same penalty applies to anyone found guilty of transforming, interpreting or performing protected works, or importing, exporting or storing copies of a protected work without authorisation from the rights holder or its licensees.

Anyone found guilty of infringement or violating privilege will be imprisoned for a period of between three months and two years and be subject to between 30 and 60 days’ hard labour. Violations include making unauthorised deals for products covered by privilege or using methods or processes that are protected. 

Will courts consider decisions in cases involving similar issues from other jurisdictions?

N/A.

Damages and remedies
Can the successful party obtain costs from the losing party?

A successful party can obtain costs from the losing party if the administrative authority initiates the process by way of civil proceedings. 

What are the typical remedies granted to a successful plaintiff?

Typical remedies granted to a successful plaintiff include an order to suspend the infringer’s use of the patent. In addition, plaintiffs can sign an agreement (administrative proceedings), after which civil proceedings for damages can begin.

In criminal proceedings, a prison sentence between three months and two years can be imposed.

How are damages awards calculated? Are punitive damages available?

Damages are calculated in civil proceedings. Awards will be based on the damages incurred by the plaintiff and can include compensation. 

How common is it for courts to grant permanent injunctions to successful plaintiffs and under what circumstances will they do this?

N/A.

Timescale and costs
How long does it take to obtain a decision at first instance and is it possible to expedite this process?

First-instance criminal decisions can take up to five years.            

First-instance administrative decisions can take up to three years.

Procedural deadlines must be followed.

How much should a litigant plan to pay to take a case through to a first-instance decision?

In administrative proceedings, litigants should plan to pay around $2,000 to bring the case through to a first-instance decision.

In criminal cases, litigants should plan to pay around $5,000 to bring the case through to a first-instance decision.

Appeal
Under what circumstances will the losing party in a first-instance case be granted the right to appeal? How long does an appeal typically take?

Administrative decisions can be appealed within 10 working days. First-instance appeals are usually resolved in 40 working days. Second-instance appeals are usually resolved within four months.

Criminal decisions can be appealed within 10 working days; that said, there are means by which decisions can be appealed within three days.

Options away from court
Are there other dispute resolution options open to parties that believe their patents to be infringed outside the courts?

Parties can sign agreements to seek conciliation outside the courts.