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INDUSTRIAL, INTELLECTUAL PROPERTY LAW ............................................ (Click over the section to see details)
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1.Organism or entity in charge of procedures and registration of rights of Industrial and Intellectual Property.
Name: Registro de la Propiedad Industrial and Registro de la Propiedad Intelectual Zapote, Carretera Curridabat, Módulo 2, Tercer Piso. In Costa Rica, the Industrial Property and the National Registry of Copyrights and Related Rights, dependencies of the National Registry of Costa Rica, are in charge of industrial and intellectual property protection, acknowledging authors, inventor and artist as owners of susceptible rights to be protected.
1.Constitutional Regulation of Industrial and Intellectual Property.
The basis for protection of intellectual property, either through copyrights, industrial property or sui generis rights, are established in article 47 of the Costa Rican Constitution which reads as follows:
“Every author, inventor, producer or trader will be granted a temporary, exclusive right on his or her creation, invention, trademark, commercial name as established by law. ”
1.International treaties and documents executed related to protection of Industrial Property.
1.National Legislation related to protection of Industrial and Intellectual Property.
1.Administrative or Standard Regulation (decrees, executive rulings) of Industrial and Intellectual Property.
PATENTS ............................................ (Click over the section to see details) Which are the substantive requirements to apply for a patent? What kind of inventions can be patented? Which inventions are forbidden and which are excluded from being patented? Which is the extension of the term granted to a patent? Is there an exploitation obligation of the patented invention? What procedure does the registration office in an application of a Patent follow? ............................................
What are the substantive requirements to apply for a patent?
An invention is considered a Novelty if it does not exist or it has not been precededby the State of Technology. The State of Technology includes everything disclosed or made accessible to the public anywhere in the world and through any means, before the filing date of the patent application in Costa Rica, or before the applicable priority date.
An invention is considered to have an inventive step if for an average person who is familiar with the corresponding matter, the invention is not obvious and does not obviously derive from the state of the art.
The object can be produced or used in the industry, considered here in its broadest sense, including, among others, crafts, agriculture, mining, fishery and related services.
Which inventions can be patented? According to Article 1 of the Law of Patents and Inventions; an invention can be a product, a machine, a tool or a manufacturing process, as long as it does not fall within any of the prohibited categories or within the exclusion of patentability detailed below.
Which inventions are forbidden and which are excluded of patentability? The following shall not be regarded as inventions:
Exceptions to patentability:
Likewise, and because it is a body of ruling prior to the amendment to the existing Law of Patents, Law on Biodiversity No.778 of April 30th., 1998, article 78 limits patentable matters to the following suppositions. 1.- Sequences of deoxyribonucleic acid per se. 2.- Plants and animals. 3.- Microorganisms, not genetically modified 4.- Essentially biologic procedures for plant and animal production. 5.- Natural processes or cycles per se. 6.- Inventions essentially derived from knowledge associated with traditional biological or cultural practices in public domain. 7.- Inventions that, when being commercially exploited in a monopolistic manner, may affect agricultural products or processes considered essential for nourishment and health of the country’s population. To try to eliminate eventual conflicts between its rules and those contained in the special legislation of intellectual property, the Biodiversity Law created the following provision: “ Article 79: Congruence of the intellectual property system: Intellectual property rights as stated in the first paragraph of the foregoing article, shall be ruled by the specific legislation of each institute. However, resolutions taken regarding protection of intellectual property related to biodiversity, must be congruent with the objectives of this Law, in application of the principle of integration.”
How long is the term of protection granted to a patent? The patent will have a non-extendable life span of 20 years, as of the filing of its application before the registry.
Is there a duty or obligation of exploitation of the patented invention? Award of a patent includes the obligation of exploiting it in a permanent and stable manner during a 3 year term, as of the date the concession is granted, or 4 years as of the date of the application, whichever is the longest, but under no circumstance the exploitation can be interrupted for more than 1 year. Therefore, the owner of a patent must, through an affidavit granted before a Notary public, communicate to the Industrial Property Registry in detail the date on which the exploitation begins.
What is the procedure for the registration of an application for a Patent of Invention? 1. Filing of the Application: The application must include a description of the claims and necessary designs to understand the invention and a summary of all documents. Applicant may divide the application in two or more sections, but none of them may imply an extension of the invention nor of the disclosure contained in the initial application. Applicant may withdraw his application at any time.
What kind of documentation and requirements must be included in the registration application of a patent? a.- Full name and address of applicant. b.- Name and citizenship of inventor. c.- Title of the invention. d.- Priority document e.- If such is the case, background information related to the priority invoked. f.- Description of memory in Spanish. g.- Claims in Spanish. h.- Designs, if necessary according to the nature of the invention. i.- Photocopy of the international search report. (EPO, PCT) j- Power of Attorney or power of attorney with assignment, when corresponding, granted by a Public Notary and duly legalized. k- Spanish translation of the invention (specifications, claims, and amendments, when applicable) assuming the international application is in a foreign language.
TRADEMARKS ............................................ (Click over the section to see details) What goods or services could be registered as a trademark? ¿Which signs are considered inadmissible to be registered as trademarks due to intrinsic reasons? Which signs are considered inadmissible to be registered as trademarks due to third parties rights? What is the procedure to file an application for a trademark? Is it possible to file multi-class applications? What documentation and requirements must accompany the application for a trademark registration? Is it possible to include amendments in renewals? How do you change ownership of a trademark? How to you transfer and license a trademark? How are well-known trademarks protected? ............................................
What could be a trademark? Any sign or combination of signs that distinguishes goods and services of one person from those of another, making such goods or services sufficiently distinctive or susceptible of identification by those same signs, from those of their same type or class.
Which signs are considered inadmissible to be registered as trademarks due to intrinsic reasons? A sign that consists of any of the following, shall not be registered as a trademark: a) The ordinary or common form of the product or packaging to which it is applied, or a necessary form imposed by the nature of the product or corresponding service. b) A form that gives a functional or technical advantage to the product or service to which it is applied. c) Exclusively a sign or indication that, in plain language or common business usage in the country, is a common or usual designation of the product or service in question. d) A sign with an indication which in business may serve to classify or describe any feature of the product or service. e) A simple color, considered separately. f) A letter or digit considered separately, unless it is presented in a special and distinctive form. g) A sign without sufficient distinctive aptitude regarding the product or service to which it is applied. h) A sign that is contrary to morality or public order. i) A sign that includes an element that is offensive to ridicules persons, ideas, religions or national symbols of any country or international entity. j) A sign that may cause deceit or confusion about the geographical origin, nature, manufacture, qualities, aptitude for use or consumption, quantity or any other feature of the product or service. k) That is identical or similar, in a way that it can cause confusion, to a trademark which registration has expired and has not been renewed during the six month priority term after its expiration, or that has been cancelled by the owner and was used in business for the same products or services or others, that because of their nature, may be associated with the former, unless three years have elapsed since the expiration or cancellation, or immediately after expiration in case of a collective trademark. This restriction shall not be applicable when the applicant is the same as the owner of the expired registration or the subject of the cancellation. l) A geographic indication that does not comply with what is set forth in the Paragraph 2 of Article 3 of this Law. m) If it reproduces or imitates totally or partially, the emblem, flag or other emblem, sign, denomination or abbreviation of any country or international Organization, without the authorization of a competent authority of the country or organization. n) If it reproduces or imitates totally or partially, an official control or guarantee symbol adopted by a country or public entity, without the authorization of a competent authority of the country. ñ) If it reproduces coins or bills of legal use within the territory of any country, securities or other commerce documents, seals, stamps or fiscal stamps in general. o) If it includes or reproduces medals, prizes, diplomas or other elements that lead to the understanding that awards have been granted in regards to the corresponding product or service, except if such awards have been in effect granted to the applicant and which fact is duly accredited with the application. p) If it consists of the denomination of a protected vegetable variety in Costa Rica or any country with which a treaty or agreement related to the protection of vegetable varieties has been reached. And q) If it falls within the prohibitions set forth by Article 60 of the present law. When the trademark consists of a label or other sign formed by a group of elements and such label or sign refers to a name of a product or service, registration shall only be approved for this particular product or service.
Which signs are considered inadmissible to be registered as trademarks due to third party rights? No sign may be registered as a trademark if it infringes on any third party rights, in the following cases, among others: a) If the sign is identical or similar to a trademark or to a trademark in registration process by a third party since the prior date and it distinguishes the same products or services or others related to them that may cause confusion to the consumer. b) If the use of the sign may cause confusion by being identical or similar to a trademark or to a trademark in process by a third party from a prior date, and distinguishes the same products or services or different products or services, but that may be associated to the prior trademark. c) If the use of the sign may cause confusion by being identical or similar to a trademark with superior rights to obtain registration for the same products or services, or different products or services, and that may be associated with those distinguished by the trademark in use. d) If the use of the sign may cause confusion by being identical or similar to a trade name or signed used in the country by a third party since the prior date. e) If the sign constitutes a reproduction, imitation, translation or transcription, totally or partially, of a design assigned recognized in any country party and to the Paris Agreement by the relevant sector of the public, in relevant entrepreneurial sectors or international commerce, and belong to a third party, whichever the products or services said design may be applied, when its use results in confusion or causes the risk of association with that third party or an unfair advantage of the design’s notoriety. f) If the use of the sign affects personality rights of a third party, particularly as to name, company, title, nickname, pseudonym, image or portrait of a person other than the registration applicant, except if consent of such person is accredited or is deceased, in which case consent of the estate shall be required. If such consent has been granted abroad, it must be legalized and authenticated by the respective Costa Rican consul. g) If use of the design affects the right to the name, image or prestige of a local, regional or national collective body, unless the express consent of the competent authority of such collective body is accredited. h) If the use of the design is susceptible to confusion with that of a protected denomination. i) If use of the design constitutes a reproduction or imitation, total or partial, of a protected certification trademark. j) If use of the design is susceptible of infringement of author’s rights or industrial property rights of a third party. k) If registration of the design was filed to carry out or consolidate an act of unfair competition.
What is the registration procedure of an application for a trademark registration? A background check is made to verify the availability of the trademark to be protected, once this is completed, an application is filed at the Industrial Property Registry and presentation fees are paid. Once the filing has been made the Registry proceeds to qualify the application, and in case any registration requirement is missing it will issue the corresponding prevention notice. If the application fulfills all requirements, the Registry issues and edict that must be published three times in the official gazette. After two months of the first publication of the edict without any challenge by a third party, the trademark is registered and the corresponding title is issued. The registration process of a trademark (without objections or challenges) will take approximately from six to eight months.
Is it possible to file multi-class applications? It is possible to file multi-class applications, but the Registry in Costa Rica does not grant any benefit for such cases, for which reason the official fee does not change.
Which documentation and requirements must accompany the application for a trademark?
How is a trademark renewed? The renewal of trademarks is done by filing the correspondent application at the Industrial Property Registry which shall contain: a) Name and address of owner. b) Name number of the registration to be renewed. c) Name and address of the attorney in the country, if such were the case; but it shall only be necessary to accredit the power of attorney when such attorney is not the same as the one designated in the registration to be renewed: if it were the same, the application must indicate the case, the name of the trademark and the file number or registry where such power is recorded. d) If a reduction or limitation of products and services covered by the registration to be renewed is desired, a list of the products or services according to the desired reduction or limitation. The products or services shall be grouped by class according to the International Classification of products and services indicating the number of each class. e) The receipt of payment of the established fee. The application for renewal can only refer to one registration and shall be filed within a year prior to the date of expiration of the registration to be renewed. It may also be filed within a grace period of six months after the date of expiration: but in such case, a determined surcharge must be paid, as well as the corresponding renewal fee. During the grace period the registration will remain in full effect. Renewal of registration of a trademark has legal effects from the date of expiration of prior registration, even if renewal has been applied for within the grace period. Once the requirements indicated in the first and second paragraphs of this article have been fulfilled, the Industrial Property Registry will register the renewal without further process. Renewal is not subject to in-depth examination or publication requirements.
Is it possible to incorporate amendments in renewals? No changes or amendments may be introduced in a renewal of a trademark or in the list of products or services covered by the registration. Registration of renewals will mention any reduction or limitation to the list of products or services that are covered by the trademark. How do you change the name of the owner of the trademark? Persons who may have changed or modified their name, legal name or denomination according to law, must apply to the Industrial Property Registry to incorporate the change or amendment to the entries of the distinctive designs that are in their name. The application for this change or amendment must include: a) Name and address of applicant. b) Indication of the designs and number of application or registration. c) Specification whether it is a change of name or a merger of companies, amongst other changes. d) Indication of the new name of the applicant. e) The power of attorney of the company resulting from said change, duly legalized and authenticated. f) Document stating the change, duly legalized and authenticated. g) Receipt of payment of the corresponding fee. The Industrial Property Registry, once it has carried out its study of the change, will grant the interested party an edict that shall be published, at the latter’s cost, and one time only, in the official gazette. Once this publication has been made, the Industrial Property Registry will issue the corresponding certificate of change or amendment.
How do you transfer and license a trademark? The rights over a trademark may be transferred independently of the corporation or the part of the corporation of the rightful owner, and with respect to one, any or all the products or services for which the trademark is registered. When transfer is limited to a product or service, or several of them, registration shall be severed and a new one in the name of the acquiring party shall be opened. If the change of ownership of the right is susceptible of causing confusion, its transfer and corresponding registration may be subject to annulment. Similarly, the owner of a trademark has the right to transfer it with the transfer of the company to which the trademark belongs, or without it. Trademarks constituted by the commercial name of their owner may only be transferred with the company or establishment that identifies such name. The right over a registered trademark or process of registration may be transferred by an act of inter vivos o mortis causa. Transfer must be made in writing and must be registered in order to be binding to third parties. a) Names of parties and their addresses. b) Indication of the trademark. c) Indication of the classification of the trademark. d) Indication of the products or services protected by the trademark. e) Value of the transfer. f) Transfer document duly signed by both parties and if it were the case, legalized an authenticated by the Costa Rica consulate. g) Power of attorney of any of the parties and, if such were the case, duly legalized and authenticated by the Costa Rican consulate. If the attorney has already acted on behalf of any of the parties, it must include an indication of the name of the trademark and the number of the application or registration where such power of attorney is found. h) Payment of the corresponding fee. In case of licensing, the requirements are briefly as follows: a) Names of owner and licensee; b) Trademark or trademarks under the license with indication of their new registration numbers and products or services covered; c) Term of license if such as been agreed; d) If the license is exclusive or not, and the conditions, agreements or restrictions agreed upon on the limited or unlimited use of a registration, and its estimated value; e) A summary of the indications related to quality control, if they were agreed.
How are well-known trademarks protected? Article 44 of the Law of Trademarks and Other Distinctive Designs establishes recognition to the owner of a well-known trademark, of his right to prevent illegal use of the notoriety of a trademark, the erosion of its distinctive strength or commercial or advertising, by third parties without any rights. On its own initiative, or by request from the owner, the Industrial Property Registry may reject or cancel registration, or prohibit the use of a manufacturing or commerce trademark, or of the services trademark, that constitutes reproduction, imitation or translation of a well-known trademark that is used for identical or similar goods, which may be susceptible of causing confusion. Likewise, it states that the Intellectual Property Registry will not register as trademark designs that are the same or similar to those of a well-known trademark, to apply them to a product or service, when use of the trademark by the applicant of the registration may cause confusion or risk of association with other goods or services of the person using said trademark, constitutes an unfair usage of the prestige of the trademark or it may suggest any relation with it, and its use may damage the interest of said person. In order to evidence notoriety of the trademark, methods of proving may be used. Criteria provided for in article 45 of this same Law to determine if a trademark is notoriously well-known, are, among others, the following: a) Dissemination of its knowledge by the corresponding public sector, as a distinctive design of the products or services for which it was agreed. b) Intensity and scope or diffusion and publicity or promotion of the trademark.. c) Seniority of the trademark and its constant use. d) Production and marketing analysis of the products covered by the trademark.
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