PATENT OFFICE PROCEEDINGS

Patenting timetable and costs

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

Obtaining a patent typically takes an average of three and a half years and cannot take more than five years, because after the said period of time, pursuant to the present law (article 32 of Legislative Decree No. 1075), the Directorate of Inventions and New Technologies, solely at the request of the party, will adjust the patent term.

Adjustment for unreasonable delay

If the competent authority commits an unreasonable delay during the granting procedure of a patent exceeding more than five years from the application date or three years from the substantive examination (except for patents claiming a pharmaceutical product) the adjustment provided by law is applicable, which is a compensation of the legally effective term of the patent. The adjustment is carried out once: when the competent authority, during the granting process of the patent, has committed an unreasonable delay for more than five years from the filing date of the patent application or three years from the substantive examination to the granting date of the patent. If the delay is incurred by the patent owner, it will not be compensated. The compensation procedure is regulated in articles 32, 33, 34 and 35 of Legislative Decree No. 1075.

Costs for obtaining and maintaining a patent, including official fees and attorneys’ fees, are:

  • registration of a patent - US$2,030;
  • responses to the examiner’s technical report - US$300 to US$530; and
  • maintenance annuities - to keep a patent in force or to maintain pending a patent application, as per article 80 of Decision 486; domestic provisions annual fees must be paid pursuant to the following scale:
    • from the first year of filing up to granting - US$161;
    • from the granting date up to 10 years - US$227; and
    • from the 11th year up to 20 years - US$289.

Note that if these payments are not made within the legal terms, the owner or applicant is notified with a new grace term (six months) for making the payment with a surcharge.

Contentious actions are not included.

Expedited patent prosecution

Are there any procedures to expedite patent prosecution?

In Peru, it is currently possible to expedite patent prosecution. To this end, the Peruvian Patent Ofice has a PPH programme with the patent offices of the following countries: Spain, Chile, Colombia, Mexico, Uruguay, Argentina, Brazil and Japan. In this sense, it is possible to submit a PPH request in Peru based on the positive examination of a related application in any of the above mentioned countries.

There are some mandatory requirements to access to the PPH programme. One of the most important requirements is that both applications must have sufficient correspondence in their claims (ie, they must have the same set of claims), in addition to not contravening any provisions with respect to Peruvian legislation.

For the PPH application, the following documents are required:

  • data of the equivalent application in the jurisdiction to which the Peruvian application will be aligned;
  • a simple copy of the official action issued by the corresponding jurisdiction where the patent is granted; for example, the patentability examination or the granting resolution;
  • a copy of the claims granted in the related application; and
  • a copy of the documents cited by the examiner in the other jurisdiction. In the case of patent documents or applications available in Patentscope, Espacenet or USPTO, only the documents are necessary. However, if the documents are not related to patents such as scientific articles, a copy of the documents and their translation into Spanish will be necessary.

Admission to the PPH programme can only be requested before the issuance of the first technical report, and only if the application has already been published and the substantive examination fees have been duly paid.

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?

Description or specifications

The description of the invention should be sufficiently clear and complete to be understood and for the invention to be carried out by a person skilled in the art. The description should contain the name of the invention and the following information:

  • the technological sector to which the invention refers or in which it will be applied;
  • prior technology known to the applicant that would help the invention to be understood and examined and references to previous documents and publications that discuss the technology involved;
  • a description of the invention in such a way that the technical problem and the solution provided by the invention may be understood, explaining the differences and possible advantages with respect to previous technology;
  • a brief description of drawings, if there are any;
  • a description of the best method known to the applicant for carrying out the invention, with the use of examples and references to the drawings if they are pertinent; and
  • a statement as to how the invention meets the condition of being capable of industrial application, if this is not clear from the description or the nature of the invention itself (article 28 of Decision 486).

Claims

Claims should specify the subject matter for which the patent protection is sought. They must be stated clearly and concisely and be fully substantiated by the description.

Claims may be independent or dependent. A claim should be independent when it defines the subject matter in respect of which protection is sought without referring to any previous claim. A dependent claim, on the other hand, defines the subject matter for which protection is sought by referring to a prior claim. A claim referring to two or more previous claims is considered a multiple dependent claim (article 30 of Decision 486).

Abstract

The summary should consist of a synthesis of the technical explanation given in the patent application. That summary will be used to provide technical information only and will have no effect whatsoever on the interpretation of the scope of protection conferred by the patent (article 31 of Decision 486).

Moreover, in view of the PCT application, the patent application filed in the original country along with the technical documents and its translation must be disclosed or described according to article 22 of the PCT in regard to patent matters.

Prior art disclosure obligations

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

There are no legal provisions stating that an inventor must disclose prior art to the Patent Office examiner.

However, pursuant to article 28 of Decision 486, the specification should contain the prior technology known to the applicant.

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?

A patent applicant may not file one or more later applications to pursue additional claims of an invention disclosed in its earlier filed application whether these additional claims involve an extension of the initial earlier filed application (ie, the additional claims can be pursued if they are duly supported in the initial specification of the earlier filed application). Likewise, a later patent application can be derived from one of the priority documents claimed in the earlier filed application, as long as it does not include the same matter as originally filed.

Later patent applications can only be submitted while the previous one is still in processing. In conclusion, the limitation consists in the fact that the matter of the later patent application can neither reproduce nor exceed the matter of the earlier filed application.

Patent office appeals

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

It is possible to file an appeal brief before the Patent Office within the 15-working-day term following the next day of notification of the adverse resolution (first-instance resolution) by filing new arguments to be settled in the second administrative instance by the Intellectual Property Court (see article 132 of Legislative Decree No. 1075).

If the decision is adverse in the second instance, it is possible to initiate a lawsuit on the nullity of the administrative resolution against the administrative authority that issued the adverse resolution.

The legal term to raise a nullity action before the court is three months after the notification of the second administrative resolution.

Oppositions or protests to patents

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

The Patent Office does provide a mechanism for opposing the grant of a patent. According to article 42 of Decision 486, oppositions may be filed by interested parties within the 60-working-day legal term from its publication in the Electronic Gazette of Indecopi.

At the request of a party, the competent office will grant an additional unique 60-day term to support the opposition.

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?

When a patent has been applied for or obtained by persons with no right to obtain it, or to the detriment of other parties possessing a right to the patent, the parties affected may claim before the Patent Office that they have the best right on the patent or the patent application by virtue of the document wherein the date, number and office where the patent application was filed are recorded.

Alongside the filing date of the patent application, this document must record the payment of established fees. It is worth noting that the priority statement and the document accrediting the priority must be filed along with the patent application within the 16-month legal term from the filing date of the patent application whose priority is invoked (see article 10 of Decision 486).

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 Patent Office has procedures for modifying a patent in accordance with article 34 of Decision 486. Usually, as per present practice, claims can be modified until prior to the issue of an administrative resolution of first instance.

It is also possible to divide the patent application as originally filed into two or more divisional patents, according to article 36 of Decision 486. This division can be done either ex officio or at the request of the interested party.

Regarding the re-examination of a patent, there is a reconsideration mechanism available to applicants for patents who wish to contest a negative verdict. The applicant may submit new documentary evidence and request that the invention be examined again in the light of the new submitted documents.

Revoking a patent is possible by an administrative nullity action of the patent in accordance with articles 75 (absolute nullity) and 76 (relative nullity) of Decision 486 and in nullity cases, when a patent was granted to a person who had no right to it, in accordance with article 77 of Decision 486.

The nullity of a second administrative instance resolution denying the patent can be requested by an impugning judicial action of the administrative resolution according to article 5 of the Ordered Unique Text of the Law, which regulates the contentious administrative process (Law 27584, Supreme Decree No. 013-2008-JUS).

The judicial authority cannot amend the claims of a patent but can rule the nullity of the second administrative instance resolution that denied the patent and order that the competent administrative authority assesses the claims through a new substantive examination and issues a resolution.

The re-examination of patents is carried out in a reconsideration, appeal or in a nullity action because the administrative authority carries out an examination of the patent again but not of the set of claims, since this cannot be amended in the reconsideration. The patentability examination is performed on the new instrumental proof and in the appeal on the arguments.

Patent duration

How is the duration of patent protection determined?

The duration of a patent of invention is 20 years as from the filing date for national applications or from the PCT International application date for national phase applications (see article 50 of Decision 486). Upon the patent being granted, maintenance fees must be paid regularly each year in advance.

The due date of each annual payment is the last day of the month on which the application was filed. There is a grace period of six months from the due date in which to pay the annuities together with the established overcharge. During the grace period, the patent maintains full enforceability. Lack of payment of an annuity causes the patent to lapse.

In Peru, there is an adjustment system for an unreasonable delay of more than five years from the filing date of the application or three years from the substantive examination, regulated in articles 32 to 35 of Legislative Decree No. 1075, whereby the patent term will be adjusted where an unreasonable delay has occurred in the granting process, attributable to the competent authority, except where the patent is for a pharmaceutical product or procedure.