Scope and ownership of patents

Types of protectable inventions

Can a patent be obtained to cover any type of invention, including software, business methods and medical procedures?

According to the law, the following are not considered to be patent-eligible subject matter:

  • theoretical or scientific principles;
  • discoveries of something that already existed in nature, even if it was previously unknown to man;
  • biological material existing in nature;
  • schemes, plans, rules and methods to make mental acts, games or business plans;
  • isolated consideration of computer programs;
  • forms of presentation of information;
  • aesthetic creations, artistic or literary works;
  • surgical, therapeutic or diagnostic methods for treatment of the human or animal body; and
  • the juxtaposition of features of already known inventions or mixtures of known products, their variation of form, dimensions or materials, unless in fact they are a combination or fusion in such a way that they cannot function separately or that the qualities or characteristic functions thereof are modified to obtain a non-obvious industrial result for a person skilled in the art.
Patent ownership

Who owns the patent on an invention made by a company employee, an independent contractor, multiple inventors or a joint venture? How is patent ownership officially recorded and transferred?

Ownership of a patent may vary, depending on different circumstances surrounding the inventors and the creation of the invention.

Where an employee, who was not obliged by an employment contract to engage in inventive activity, creates an invention in the employer’s field of activities, or by using means or data provided by or owned by their employer, access to which was only possible because of his or her job, the employer will have the right to claim the co-ownership of the patent and the inventor or employee is obliged to permit that co-ownership, equitably enjoying the profits caused by the exploitation of the invention; provided that within two months after the date the employer was notified by the inventor of the invention, or was aware of the creation of the invention by other means (whichever expires first), the employer informs the inventor about their interest in the invention. If the employer does not inform the inventor about its interest in the invention within the two-month term, the inventor will be the rightful owner of the invention. Any contractual provision less favourable to an inventor or employee who is not involved in inventive activities shall be considered void ipso jure.

When the invention was made-for-hire or as a result of a work or services contract, the right to apply for and be granted a patent over the invention belongs to the person who contracted the work or hired the services, unless otherwise agreed.

When the value of the invention obtained as a result of a made-for-hire contract, or a work or services contract surpasses the reasonable expectations that both parties had when the agreement was executed, the inventor has the right to obtain a special remuneration from the owner of the patent. In the absence of agreement between the parties, the special remuneration will be fixed by a judge. Any contractual provision less favourable to the inventor on his or her rights to obtain a special remuneration shall be considered void ipso jure.

Patent office proceedings

Patenting timetable and costs

How long does it typically take, and how much does it typically cost, to obtain a patent?

Provided that all outstanding documents are properly submitted in due time and that the invention concerns eligible subject matter complying with all the legal requirements, it would normally take four to five years to obtain a patent.

The typical cost of obtaining a patent is between US$1,700.00 to US$2,300.00.

Expedited patent prosecution

Are there any procedures to expedite patent prosecution?

Honduras does not have procedures, such as the Patent Prosecution Highway, to expedite the process.

Patent application contents

What must be disclosed or described about the invention in a patent application? Are there any particular guidelines that should be followed or pitfalls to avoid in deciding what to include in the application?

The applicant must disclose any other patent application or other title of protection that he or she has filed or been granted in a foreign country that totally or partially refers to the same invention.

The application must describe the invention in a sufficiently clear and complete manner, so that it can be examined by a person skilled in the art. The description of the invention must include the following information:

  • the name of the invention;
  • the technological field to which the invention applies;
  • the prior technology known by the applicant that may be considered useful for understanding and examining the invention, including references to related documents and publications;
  • a description of the drawings;
  • the best description known by the applicant for the execution of the invention, using examples and references to the drawings; and
  • the way in which the invention is susceptible of industrial application, namely the way it can be produced and used by a person skilled in the art.
Prior art disclosure obligations

Must an inventor disclose prior art to the patent office examiner?

It is not necessary for an inventor to disclose the prior art in a patent application; however, the examiner will always consider all material prior art when analysing the patent application, the inventive level, the industrial application and the novelty of the patent.

Pursuit of additional claims

May a patent applicant file one or more later applications to pursue additional claims to an invention disclosed in its earlier filed application? If so, what are the applicable requirements or limitations?

No. The only possibility to submit later related applications arises if an examiner determines that one or more divisional applications must be submitted to comply with the ‘unity of invention’ principle. In that scenario, applicant may be able to submit as many divisional applications as necessary to comply with that principle.

Patent office appeals

Is it possible to appeal an adverse decision by the patent office in a court of law?

An administrative appeal is available against the final resolutions issued by the Patent and Trademark Office.

An appeal for reversal is available against the administrative appeal’s decision and can be submitted before the Secretary of Economic Development.

Oppositions or protests to patents

Does the patent office provide any mechanism for opposing the grant of a patent?

After the application is published, any interested person may submit an opposition against the application, by way of written arguments (referred to as ‘observations’), as well as information affecting the patentability of the invention.

Priority of invention

Does the patent office provide any mechanism for resolving priority disputes between different applicants for the same invention? What factors determine who has priority?

The patent office does not rely directly on a mechanism for resolving disputes between different applicants. The law establishes that where several people come with independent inventions, the patent will be granted to the right holder who first files the patent application or claims the priority of the earliest date.

Modification and re-examination of patents

Does the patent office provide procedures for modifying, re-examining or revoking a patent? May a court amend the patent claims during a lawsuit?

The Law provides the option to modify a patent as long as the application is active.

Any modification may not amount to an extension of the disclosure contained in the application.

If the modification involves alteration of the substance of the application, the Patent and Trademark Office Director may order a re-examination. Except for that scenario, the Law does not allow for re-examining the patent application.

A granted patent may be revoked by the Patent Trademark Office, at the request of any interested person or competent authority, for reasons concerning abuse of the acquired patent right.

Patent duration

How is the duration of patent protection determined?

Patents confer 20 non-extendable years of protection, counted from the date of filing.

Annual fees or annuities must be paid to keep a patent or a pending patent application in force.

Law stated date

Correct on

Give the date on which the information above is accurate.

March 2021.