Amendments of the Regulations to the Law on Patents 6867
On April 24, 2014, the Decree 38308-JP, which amends some of the articles of the Regulations to the Costa Rican Patent Law 6867, was published in the Official Gazette.
Most of these amendments are clarifications about the administrative procedures and the compliance with the obligations recorded in the amendments to the Patent Law of 2008, which, among others, implemented the requirements in Industrial Property Law derived from the Central America Free Trade Agreement (CAFTA).
Even though most of these amendments do not entail the need for changes in the requirements for ongoing procedures, as the new Regulations are in force since its publication, we would like to highlight the most important aspects introduced by them:
Description of the invention
Article 7.f) of the Regulations establishes that pharmaceutical applications must specify in the description the generic name, international certificate or International Common Denomination established by the World Health Organizationunderwhich the application has been filed or the invention is known in other countries, when already established.
Postponement of Publication
According to article 17.5 of the Regulations, the applicant can now apply, when necessary, for a postponement of publication of up to 12 months from the filing date.
Article 19.3 of the Regulations establishes that the applicant can file amendments to the set of claims only until the filing of the receipt for payment of fees for substantive examination. Amendments after that time limit are still accepted, provided they are duly justified by the applicant, if they have been received before the Examiner for the substantive examination has been assigned. From that moment, claim amendments are only accepted when they are filed together with the response to a substantive examination report, in order to overcome an objection.
Stages of the Substantive Examination
According to articles 19.4 and 19.7 of the Regulations, the substantive examination of patent applications has been divided into two stages.
During the first stage, the Examiner will evaluate the sufficiency, clarity and unity of invention requirements. Once those observations are overcome, the second stage will begin where the Examiner will evaluate the patentability requirements of Novelty, Inventive Step and Industrial Application.
In each phase, the applicant will be notified of the observations raised by the Examiner and will be able to apply for an interview with the Examiner within the 15 days following the notification. The deadline for replying to an Office Action in both phases of the Examination period will be one month from the notification of the corresponding Office Action, with the possibility of applying for a time extension.
Start of industrial exploitation
It is specifically pointed outin article 25.2 of the Regulations that the case of patented products that require a Sanitary Registration for their exploitation, which has still not been granted in the country of origin or is still being processed in Costa Rica, will not be considered as a lack of industrial exploitation.
Annuity payments are required only after grant and only for applications filed from April 25, 2008, according to article 46 of the Regulations.
The fees for patent application filing and patent certificate issue cover the payment of the first annuity. Accumulated annuities from the filing dateare due within two monthsafter the granting date. Subsequent annuities must be paidbefore the commencement of the relevant year of lifeand the deadline is the last day of the anniversary month of the filing date.
If an annuity is not paid in due time, a six-month extension periodwill be grantedfor the payment of the annuity that is due, but the amount willinclude an extra charge of 30% over the amount prescribed.
Formal requirements to apply for a patent term extension
Article 22bis of the Regulations specifies the formal requirements of applications for patent term extensions when there has been an unjustified delay of the Costa Rican Industrial Property Registry to grant the patent.
Article 23 of the Regulations establishes that the Costa Rican Industrial Property Registry will allow the Ministryof Health, as well as other competent authorities, access to the information contained in the national patent database, pursuant to the provisions of article 16 of the Patent Law 6867.