In brief: patent prosecution in Guatemala

Scope and ownership of patents

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

Surgical and therapeutic methods for the treatment of humans or animals, as well as diagnostic and business methods, may not constitute patent eligible subject matter. Software, individually considered, is not eligible subject matter; copyright protection is warranted. Further, mere discoveries; natural products and substances; scientific theories and mathematical methods; mere aesthetic creations or literary and artistic works; principles, economic rules or methods; and mental steps may not be patented.

In general, patents are available for any type of inventions such as a process, machine, manufacture or composition of matter, or any improvement thereof, in all fields of technology, provided that they are new, involve an inventive step, are capable of industrial application, and do not consist of those excluded by the law.

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?

There are specific rules that determine, separately, who owns the patent of an invention made by a company employee, as well as an independent contractor or a joint venture. Ownership may vary, depending on different circumstances surrounding the inventors and the creation of the invention. For work-for-hire or performance of contract cases, the general rule is that the creation of an invention belongs to the employee or the contractor.

For patents with multiple inventors, unless otherwise assigned or agreed, ownership of a patent belongs to all the inventors as co-owners. The ownership of the patent, as well as the transfer of a patent, must be officially recorded in the Guatemalan Patents and Trademark Office.

Patent office proceedings

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

Provided that all the outstanding documents are properly submitted at the time of the filing and that the invention is a patent-eligible subject matter complying with all the legal requirements, it takes approximately five years to obtain a patent.

The typical cost of obtaining a patent is US$2,000 to $3,000.

Are there any procedures to expedite patent prosecution?

There are currently no procedures to expedite patent prosecution.

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 description must disclose and describe the invention in a sufficiently clear and complete manner so as to enable an expert skilled in the art to confirm that an applicant possessed the invention at the date of the submission of the application, or at least on the date of submission of the priority application. As standard practice, however, it is recommended that the description must expose the advantages thereof with respect to the closest prior art, including the best way known by the applicant to execute or carry out the invention by any means.

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

The inventor need not disclose prior art; nonetheless, it is advisable. During the examination phase, the examiner may require the applicant to submit novelty and patentability search results obtained from patent offices from other jurisdictions.

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 exception is the filing of a divisional application. In such cases, a patent applicant may file a divisional application at a later stage (and before entering the examination phase) if the invention does not comply with the unity of invention requirement.

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

It is possible to file an administrative appeal against an adverse decision by the Guatemalan Patents and Trademark Office filed against the Ministry of Economy, and the decision of the Minister of Economy may be appealed before a court of law for administrative subject matter cases. The court will review the juridicity (which examines the entirety of legal aspects) of the decision issued by the Minister of Economy.

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

No. Nonetheless, it does provide a mechanism for filing non-binding ‘observations’. The applicant does have the right, however, to file a response writ against third-party observations, although the applicant is not obliged to do so.

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 have sufficient powers to decide priority disputes between different applicants directly. In any case, during the examination phase, a prevailing applicant is the one who demonstrates a prior filing date and time. A first-to-file rule is the standard to determine which application is novel and which application is not novel.

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 provides procedures for modifying the patent throughout the application process. The Guatemalan Patents and Trademark Office does not provide procedures for modifying, re-examining or revoking a patent.

Depending on the case, a court could decide to amend the patent claims by way of a judgment.

How is the duration of patent protection determined?

The duration of the patent is 20 years after the filing date. If the patent is a Patent Cooperation Treaty National Phase application, the duration is determined, depending on the type of application, 20 years after the international filing date of the application (Chapter II).

Law stated date

Give the date on which the information above is accurate.

March 2021.