The Directorate of Patents of the Costa Rican PTO has recently reviewed and reinterpreted the provisions of the Regulations to the Costa Rican Patent Law 6867 regarding patent annuity payments. The main changes are as follows:
- The first annuity for PCT applications corresponds to the first year of the international application, and not to the first year of the national application, as established before by the Costa Rican PTO.
- After grant, the Costa Rican PTO will issue an official requirement indicating the accumulated annuities that must be paid and the deadline to proceed with the payment (two months from the notification of grant). If the annuities are not paid, a six-month grace period will be granted, with a 30 percent surcharge.If the annuities are not paid even after the six-moth grant period, two ten-day office actions will be issued requiring the corresponding payment plus applicable interests.
- Even though it is still not clear how the non-payment of annuities fees would affect a patent, it is advisable for the patent holder who has lost interest in a patent in Costa Rica to file a formal abandonment letter before the Costa Rican PTO. Otherwise, even though the patent is passively abandoned, the patent holder will still have the obligation to pay the unpaid annuities and the PTO will maintain the protection of the patent. In filing the formal abandonment, the corresponding patent should be free from outstanding annual fees, or else the PTO will reject the filing of formal abandonment.
- Patent annuities paid under the scheme initially implemented by the Costa Rican PTO are deemed to be properly paid and the term of the patent will not be affected.
In 2014, the Decree 38308-JP, amending some of the articles of the Regulations to the Costa Rican Patent Law 6867, entered into force.Regarding patent annuity payments, the regulations stated that they were required only after grant and only for applications filed from April 25, 2008, and that the payment of the first annuity was made together with the patent certificate issue fees. Additionally, the Regulations clarified that accumulated annuities from the filing date were due within two months after the granting date, and subsequent annuities must be paid before the commencement of the relevant year of life and the deadline was the last day of the anniversary month of the filing date.
Finally, the Regulations established that, if an annuity was not paid in due time, a six-month grace period would be granted, but the amount would include a 30 percent surcharge over the amount prescribed.
Should you require any further information, please contact us. We will keep you updated regarding any further developments on this matter.
The Costa Rican banana tree has been recognized as a Geographical Indication (GI) by the European Union (EU). GIs are included through an annex to the Association Agreement between Central America and the European Union (Acuerdo de Asociación entre Centroamérica y la Unión Europea [AACUE])
The recognition of this fruit tree as a GI is a link between the product and the country of origin linking it to a sustainable production process. Costa Rica is the only banana exporting country with such distinction. Costa Rica is one of the largest banana producers in the world with sales in 2014 of $ 903 million, of which $ 422 million was exported to the European Union.
Jorge Sauma, general manager of the National Banana Corporation (Corporación Bananera Nacional – Corbana), said that the geographical indication “Bananas of Costa Rica” will be “a tool for competitiveness that will differentiate the Costa Rican fruit” in the European market.
Source: www.corbana.co.crRead More
The national registry of Costa Rica announced that there are two new online services available: a graphic trademark search and a “chronology consult.” In order to use these services, the user should have a user ID and a password.
On one hand, the graphic trademark search will give the possibility to find every distinctive sign existing at the time of the search, which contains a certain denominative part. The result will show, for example, the number of the file and the information available on the owner.
On the other hand, the chronology consult is a free service that checks the records of a certain trademark. To be able to use this new tool, it is necessary to have the number of the file.
The Official Gazette of the Republic of Costa Rica published guidelines “DRPI-004-2014” from the Industrial Property Registration Office that established new guidelines for the operation of “unofficial agents” in industrial property issues.
For many years the local PTO accepted the legal figure known as “unofficial agent,” as is common in other countries. This gave the possibility to any person to start a judicial or administrative procedure on behalf of another without the need to have a power of attorney to do so. For the past years, this method was accepted by the Industrial Property Office, which then requires a promissory note to ensure the ratification by the beneficiary of the action taken within a period of one month for nationals and three months for foreigners.
Under the new rules, the unofficial agent has now to provide evidence of the existence of the corporation or legal entity that he or she is representing. This evidence can be provided by means of a notarial certification, or an incorporation certificate, that in the case of foreign documents has to be duly legalized by apostille or consular seal.
These new guidelines effectively nullify the effect of the unofficial agent for intellectual property matters, due to the fact that the requirement of an apostilled certificate of existence is more difficult than a simply notary authenticated Power of Attorney. Therefore, in case of the filling of a trademark application on behalf of foreign applicants it is advisable to have the properly certified corresponding power of attorney.
For more information, the guidelines can be found at the following link: http://www.gaceta.go.cr/pub/2014/11/10/COMP_10_11_2014.pdf . Page 6.
Source: http://www.pgrweb.go.cr/scijRead More
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.
Legalizing documents for use in Costa Rica will be much easier now.
The Legislative Assembly has enacted Law No 8923, approving the adherence of Costa Rica to the Hague Apostille Convention, formally known as the “Hague Convention of 5 October 1961 Abolishing the Requirement of Legalization for Foreign Public Documents”, so the validation process of public documents executed in a State party of the Convention shall be exempt from the requirement of consular legalization, accepting instead the Apostille process. The law was published in the Official Gazette on March 8, 2011.
Costa Rica’s ratification of the Apostille convention will greatly help reduce the time and cost involved in obtaining foreign public documents for local purposes. In the IP-field, this will have particular impact in easing the requirements for filing trademark, patent and design applications as well as for matters such as recordals of changes of name or assignments among others.
It is expected that by January 2012 all the steps needed to implement and to be operating in Costa Rica for the apostilization system covered by the Convention have been completed.
Thus, if there is no objection filed by any third country, the Apostille Convention would come into force at the beginning of the next year.Read More
On December 14th, 2011, the Hague Convention Abolishing the Requirement for Legalization for Foreign Public Documents, the “Apostille Convention”, entered finally into force in Costa Rica.
With this addition, currently the Latin-American countries members of the Apostille Treaty are: Argentina, Belize, Costa Rica, Colombia, Dominican Republic, Ecuador, El Salvador, Honduras, Mexico, Panama, Peru, Trinidad and Tobago and Venezuela.
The Apostille Convention is a method that simplifies the legalization of foreign documents in order to verify its authenticity.
Section 1 of the Apostille Treaty establishes that the Convention applies to the following public documents: court documents, administrative documents, documents issued by a notary and official certifications in documents signed by private persons.
It is important to remember that the Apostille is valid only among countries that have signed the Convention.