New Patent Law
Patent Law Regulatory Decree
This update addresses the various issues covered by Patent Law 1630, which was passed on November 29 2000 and took effect on January 29 2001.
The legislation governs all aspects of patents and utility models. It complies with the most modern conventions in this field, most notably the agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS), including the Final Act of the Uruguayan Round of the General Agreement on Tariffs and Trade (GATT), ratified by Paraguay under Law 444 of 1994.
Patentability of pharmaceutical products
The law permits pharmaceutical products to be patented and the relevant provisions will take effect on January 1 2003.
The law stipulates that the Industrial Property Office must order the publication of a patent within 18 months of its filing date (or priority filing date if a priority right has been invoked). The law also provides for the possibility of publication before the expiration of this term.
The new law establishes that inventions will be patentable provided that they involve an inventive step and can be utilized in industry. These patents will have a maximum duration of 20 years from the date of application.
Annual maintenance fees
Annual maintenance fees must be paid from the third year of the date of application in order to maintain a patent's enforceability. A grace period of six months is available. Varying fees are payable depending on a patent's duration.
The law provides for the granting of compulsory licences and the obtaining of ordinary licences in the following cases:
- where an individual has tried and failed to obtain a licence, and in applying adhered to the necessary terms and conditions;
- where a patent for an invention has not been used within three years of being granted (or four years from the application date), or its use has been interrupted for more than a year;
- where, for reasons of national security, emergency or technological development in certain strategic areas, the relevant authorities grant compulsory licences through decrees;
- cases of antitrust practices (compulsory licences only); and
- cases of patent dependency (compulsory licences only).
Licences are granted by means of an administrative procedure that is overseen by the Industrial Property Office.
The new law provides for the judicial revision, revocation and amendment of compulsory licences. During the revision period, precautionary measures that may adversely affect the validity or nature of the granted licence may not be issued.
The law protects utility models and they enjoy a duration of 10 years.
All resolutions issued by the Industrial Property Office are subject to appeal.
The following actions for infringement are laid down in the law:
- civil action for repossession of a patent right;
- civil action for infringement of a patent right; and
- criminal action for infringement of a patent right.
Burden of proof
During a civil claim the defendant may be asked to prove that its product has been created in a unique manner, but without having to disclose its trade secrets.
The law obliges infringing parties to pay damages.
The law provides for the application of precautionary measures which aim to:
- prevent major damage;
- obtain or preserve evidence;
- ensure the effectiveness of any action, redress or damages; and
- prevent further infringement.
If the affected party presents a sufficient warrantee or bond he or she may be permitted to continue manufacturing.
Patents granted prior to the new legislation will continue to be effective for the original term granted.
The provisions of the new law apply in relation to a patent's use, enjoyment, obligations and licences. The duration of patents granted prior to the new law may no longer be extended to 20 years. However, this provision may violate the TRIPS regulations. Therefore, it is recommended that requests for extensions be filed with annuity payments.
The rights conferred by a patent cannot be used against an individual who, in good faith and prior to the filing date, had:
- already started to produce the product;
- used publicly the procedure which constitutes the invention; or
- carried out the preparatory steps towards the invention's production or use.
Filing of applications and exclusivity rights
Since January 1 1995 it has been possible to file applications for pharmaceutical products (further to the TRIPS agreement), although pharmaceutical patents may not be granted before January 1 2003. Once granted, the patents have a duration of 20 years from the filing date. The new law provides for the possibility of obtaining exclusive commercialization rights over pharmaceutical products before January 1 2003.
Revalidation or confirmation patent
The new law does not allow the revalidation or confirmation of patents granted in foreign countries, as was allowed under the former Law 773/25. However, the obtaining of the revalidation of a patent may be attempted if the patent was granted in Argentina, Bolivia, Brazil, Chile, Peru or Uraguay, since they are all signatories to the Montevideo Treaty of 1889 concerning Invention Patents.
If the revalidation request is rejected by the relevant patent office, a judicial action may be initiated since the Constitution establishes that international treaties have supremacy over national laws.
On August 2 2001 a regulatory decree was issued to complement the new Patent Law.
The most important aspects of the regulation are as follows:
- The rights and duties established by the law will be imposed upon individuals and legal entities regardless of their nationality.
- All relevant information and documentation must be prepared in Spanish.
- Publication of a patent will take place within 18 months of the date of application. All requests for earlier publication must be submitted to the Patent Office.
- Applicants will be notified of objections by third parties or the patent examiner, and will have 60 working days in which to respond. Any third-party observations will be taken into consideration during the final availability examination.
- Applicants may submit copies of examinations concerning novelty or patentability that were made/conducted abroad.
- Patent applications that were filed and granted under previous legislation will be subject to the annual taxes outlined in the new act. The taxes must be paid according to the remaining validity of the relevant patent from the date that the new law came into effect.
Before August 29 2001 fees for patents with applications dating between January 29 2001 and August 29 2001 were payable without a surcharge. The grace period for payment with a surcharge began on August 30 2001. Calculations are valid only during 2001.
Pending applications and revalidations will be subject to the procedure established in the previous law, except for the rules regarding payment of fees.
The new law stipulates an obligation to pay annuities in order for patents to remain effective. The obligation extends to all patents granted and/or filed under previous legislation. According to Article 30:
"In order to maintain the validity of a patent or a patent application in process, annual fees shall be paid. Payments shall be made prior to the start of the corresponding annual term. The expiration date for the payment of each annual fee shall be the anniversary of the presentation date of the patent application. The first annual fee shall be paid prior to the start of the third year as of the filing date of the patent application. Several annual fees may be paid in advance.
The annual fee may be paid within a grace period of six months, as from the start of the corresponding annual term by paying the established surcharge at the time. During the grace period, the patent or patent application shall remain in full force. Default in the payment of any of the annual fees shall result in expiration of the patent or patent application."
For further information on this topic please contact Luis Breuer at Berkemeyer Attorneys and Counselors by telephone (+595 21 446706) or by fax (+595 21 449694) or by email ([email protected]). The Berkemeyer Attorneys and Counselors website can be accessed at www.berke.com.py.