Free live Webinar on Computer Implemented Inventions (CII) in Latin America on Wednesday July 8th at 12;00 EDT.
Join Jose Santacroce, Head of Moeller’s Patent Department, and Mariano Municoy, Head of our Legal Department in this live webinar where they will analyze the most important issues when filing, prosecuting and enforcing patents protecting CII in Latin America, particularly in Argentina, Brazil and Mexico
Mr. Santacroce retired as Director at the European Patent Office in the field of Computers (Human-Computer Interaction) after working there for 30 years and since early 2018 has led Moeller Patent Department.
Mr. Municoy has 20 years of legal experience and teaches regularly IP courses both in the US at Chicago-Kent as well as in Argentina at Austral and San Andres Universities.
Even though in absolute terms the number of CII patent applications in Latin America is still very low when compared to those of developed countries/regions, relatively speaking they have been growing faster than applications in other fields of technology, which very likely will accelerate in the near future as we all adapt to the new ways of living and working in an-after-COVID 19-world
During the webinar, they will present both a general picture and some particular insights about the best ways to achieve the optimal legal patent protection for CII inventions in Latin America.
At the end, there will be some time available for live Q&ARead More
By Moeller IP.
The latest update about the suspension of deadlines in the American Region Patent and Trademark Office.
Resolution N 22-2020
The Argentinian Patent and Trademark Office published the Resolution N 22-2020 in the Electronic Official Bulletin of April 2, 2020, introducing the following:
Considering the current sanitary emergency, to extend the suspension of terms determined by the Resolution N 16-2020, until April 12, 2020, inclusive.
We will continue to provide legal updates as needed and requested, to our clients and colleagues worldwide. We wish you to stay healthy and safe.
Please do not hesitate to contact us at any time with any doubt or questions you may have.
Source: https://www.boletinoficial.gob.ar/detalleAviso/primera/227374/20200402Read More
By Moeller IP.
Patentability of Computer-Implemented Inventions in Latin America
Join Moeller experts on this coming webinar organized by the Section of Intellectual Property of the American Bar Association on Tuesday, March 31 at 12ET
Our experts are:
- Jose Santacroce, Head of Moeller Patent Department and a former patent examiner who retired as Director at the European Patent Office in the field of Computers (Human-Computer Interaction) after working there for 30 years.
- And Mariano Municoy, Head of the Regional Legal Department at Moeller and Adjunct Professor at Universidad de San Andres as well as Austral in Argentina, plus a regular foreign visiting professor at Chicago Kent in the USA,
- They will be joined by Helena Galan. She is a specialist at Darts IP, the top global IP caselaw database provider
This will be a live webinar where they will analyze the most important issues when filing, prosecuting and enforcing Computer-Implemented Inventions (CII) in Latin America. Particularly in Argentina, Brazil, and Mexico.
Even though in absolute terms the number of CII patent applications in Latin America is still very low when compared to those of developed countries/regions. Relatively speaking they have been growing faster than applications in other fields of technology. Fact that is also expanding the non-very distant almost non-existing caselaw
However, there are many serious challenges to obtain legal protection which start at the time of filing and prosecuting such as navigating. For example the exclusions from patentability, establishing the technical character /contribution of the invention as well as assessing the presence of inventive step.
During the webinar, we will present both a general picture and some particular administrative and judicial cases. That way you can get the knowledge about the best ways to achieve the best possible legal protection of CII inventions in Latin America.
To register go to this website: https://www.americanbar.org/events-cle/mtg/web/395256589/Read More
As a result of an investigation by the National Commission for the Defense of Competition (CNDC), the Ministry of Commerce fined the Argentine Society of Authors and Composers of Music (Sadaic) for US $ 1,567,945. The survey determined that Sadaic charged “excessive prices” on copyright fees paid by hotels and other establishments for music reproduction in hotels guest rooms.
To determine this fine, the CNDC made an international comparison of the tariffs paid for the reproduction of musical works and the result of the investigation determined that in Argentina hotels and other establishments pay between six and nine times more than the average of the reference countries.
These fees imply a fee payment for copyright for playing music in hotels. With the calculation methodology used by Sadaic, each hotel must pay the fee for having televisions in the rooms, regardless of whether the room was occupied or not and if musical works were even used.
“This measure implies an improvement in the competitiveness of the tourism sector and enables the reduction of tariffs for rights of authors and composers charged for the secondary reproduction of TV and music content in hotels,” according to the president of the CNDC.
Finally, the CNDC recommended to the Executive Branch that the tariff fixing system be restructured based on a criteria of “reasonableness, non-discrimination, transparency, fairness and limited scope.” The CNDC suggested that the collection management system must be modernized in order to expand users and reduce tariffs, “without substantially affecting income.”Read More
WIPO GREEN was launched on November 28, 2013 to provide an online marketplace connecting a wide variety of groups seeking shared innovation and environmentally friendly technologies to address climate change. WIPO GREEN is governed by the Advisory Board and the Secretariat under the rules laid out in the WIPO GREEN Charter.
The WIPO GREEN database and network matches owners of new technologies with individuals or companies seeking to commercialize, license or otherwise distribute a green technology. Its objective is to accelerate innovation and diffusion of green technologies and contribute to the efforts of developing countries in addressing climate change.
The WIPO GREEN database offers a broad listing of green technology products, services and intellectual property (IP) assets, and also allows individuals and companies to list green technology needs.
- offers green technology providers greater visibility for their products, services and IP assets (including inventions, patents, technologies and know-how) for sale or license, helping to attract partners and finance;
- advertises technological needs – including specific technologies and IP assets, funding, training and professional services;
- provides a listing of innovative green technologies, IP assets and experts that makes it a useful resource for investors, entrepreneurs and licensing managers looking to construct and execute deals in the green technology space.
The WIPO GREEN network:
- helps facilitate commercial relationships and transactions by connecting green technology providers and seekers, and acting as a gateway to a range of relevant services;
- hosts a freely accessible online roster of green technology consultants and service providers, offering expertise in a wide range of areas including IP management, licensing and investment;
- acts as a gateway to useful IP services, such as WIPO’s Arbitration and Mediation Center.
Through the network, members can meet a wide range of stakeholders – including SMEs, multinational companies, intergovernmental organizations, investors and academics that provide a new opportunity for collaboration and partnership.
The WIPO GREEN Network has grown to reach over 6,000 members and subscribers across 170 countries in 2017. The expansion of our Network continues. Latin American partners include:
- Brazilian Forum of Innovation and Technology Transfer Managers (FORTEC), Brazil
- Brazilian Institute of Industrial Property (INPI), Brazil
- SOLBEN, Mexico
Only Brazilian and Mexican partners have been involved from the beginning of the project, which leaves a large field of expansion in Latin American in the near future. It also denotes the need of increasing the efforts to achieve conscience developing, sharing and implementing green technologies in this vast area of the planet.
Among the key technologies of this century, nanotechnology raises particularly high expectations in a wide range of areas affecting daily life. Nanotechnology is a science, which operates at an extremely small scale: between 1 and 100 nanometers (1 to 100 billionths of a meter). In fact, entities with a controlled geometrical size of at least one functional component below 100 nanometres in one or more dimensions is susceptible of making physical, chemical or biological effects in an unexpected way. At this scale interesting and potentially promising phenomena such as statistical and quantum mechanical effects become evident. Therefore, it is easy to see how manipulating matter at the atomic level could potentially lead to enormous developments.
Nanotechnology can occur in almost any area of science and engineering: it is just as relevant to biotechnologists and physicists as it is to electrical and mechanical engineers or materials scientists. The interdisciplinary nature of the field means that anyone interested in literature on nanotechnology, especially existing patent documents, struggles to retrieve it from the databases available.
For example, according to StatNano (*), a total number of 20187 patents have been published in United States Patents and Trademark Office (USPTO) in 2017, among which more than half belongs to the United States. South Korea, Japan, China, and Taiwan are the next countries in this ranking. A number of 4019 nanotechnology patents have been published in European Patents Office (EPO) in 2017.
For this reason, it is interesting to see what is happening in Latin American countries in nanotech matters. According from data obtained in LATIPAT following the criteria of International Standard Organization (ISO/TS 18110) [i.e. a patent is related to nanotechnology when it has at least one claim about nanotechnology or it has a code related to nanotechnology according to IPC], a number of 3631 nanotechnology patents have been published in Latin American countries. From this number of nanotechnology patents, only Brazil has a number of 1877 patent applications (i.e. about 50% of the total applications in the region) followed by Mexico with 1220 patent applications. Other relevant countries of the region showed lower penetration in connections with this technology, for example, Argentina showed a number of 274, while Colombia showed a number of 87 patent applications.
The figure shows the applications published in 2017 contrasted to those published in 2016 in relevant countries of the area.
From these results, it is possible to see how Argentina, Brazil, and Mexico showed a declination in the published applications in the main countries of the region, while only Chile and Peru showed a significant increase in the published patent applications. Additionally, regarding nanobiotechnology, it is stressed that about 80% of the overall nanobiotechnology patents are from the medicinal preparation area followed by a significant number in case of diagnostic and surgical applications.
Source: (*) http://statnano.com/news/62082Read More
By Marta Garcia
What is the Bolar exemption?
Some products, typically pharmaceutical products but also agrochemicals and medical devices, cannot be marketed without obtaining marketing approval from a competent regulatory authority, in order to prove that the product is safe and effective.
Even though the requirements for obtaining such regulatory approval differ from country to country, in general the authorization for new chemical or biological entities (innovative products) is much more complex than the authorization for a generic or biosimilar products (generic products). Whereas for innovative products, clinical tests and trials must be conducted in order to prove their safety and effectiveness, generic companies can rely on some of the tests and data submitted for the original medicinal product.
However, since it has to be proven that the generic version of the medicinal product is bioequivalent to the previously approved medicine in order to obtain a marketing authorization, a generic company will usually require the obtaining and testing of samples. Therefore, if the original medicinal product is patent protected, such production and use of the product by generic manufacturers for testing may be considered an infringement of the patent, even if they are not planning to enter the market until after patent expiration.
As regulatory approval can take several years, in order to overcome this problem and expedite the market entry of generic products after patent expiration, many countries have introduced legal exemptions from patent infringement for tests and trials involving patented products necessary to get marketing authorization.
These exemptions are often called “Bolar exemptions”, in reference to a US law enacted to overturn a prior US Federal Circuit’s ruling – Roche Products, Inc. v. Bolar Pharmaceutical Co., Inc., 733 F.2d 858 (1984) – against generic drug manufacturer Bolar, which was using Roche’s patented active pharmaceutical ingredient in order to conduct clinical trials necessary to obtain regulatory approval.
Many countries have introduced similar exemptions, but their nature and scope vary significantly from one nation to another. According to a draft reference document dated November 2017 by the World Intellectual Property Organization (WIPO)´s Standing Committee on the Law of Patents, the applicable laws of more than 65 countries provide for the exception related to acts for obtaining regulatory approval from authorities.
The Latin American case
Regarding Latin America, the following countries have put in place Bolar exemptions: Brazil (Law on Industrial Property 9.279, as amended by Law 10196, Article 43), Chile (Chilean Patent Law, Article 49), Colombia (Andean Decisions 486 and 689, and Decree 0729), Costa Rica (Patent Law 6867, Article 16.2), Dominican Republic (Law on Industrial Property 20-00, Article 30), El Salvador (Legislative Decree 604 on Amendments to the Law on Intellectual Property, Article 116), Mexico (Regulations on Health Related Consumable Goods, Article 167bis), Paraguay (Patent Law 1630, as amended by Law 2593, Article 34), Peru (Andean Decisions 486 and 689, and Decree 1075, Article 39), and Uruguay (Industrial Property Law No. 17.164, Article 39).
Argentina may provide a Bolar-type exemption under Law 24766, which relates to data confidentiality, but this remains to be tested in the courts. Article 8 of this Law states that “In the case of a product or procedure protected by a patent, any third party may use the invention before the expiration of the patent, for experimental purposes and to gather the information required for the approval of a product or procedure by the competent authority for its marketing after the expiration of the patent.”
Regarding the member states of the Andean Community (Bolivia, Colombia, Ecuador and Peru), they have the option of establishing a Bolar exemption in their national legislation (through Decision No. 689 on the adequacy of certain articles of decision 486 establishing the common regime on industrial property, allowing the development and deepening of the industrial property rights across the internal regulation of the members states). However, until now only Colombia and Peru have enacted clear exemptions.
In most of these countries, there is an explicit provision on regulatory review exception in the respective IP or patent legislation. However, in Argentina and Mexico, these provisions are contained in other legislations, e.g., relating to health and/or pharmacy.
In Argentina, Brazil, Colombia, the Dominican Republic, Paraguay and Uruguay, the exception applies to any product that requires regulatory approval. However, in Chile, Costa Rica and Mexico the exception is limited to pharmaceutical products, and in El Salvador and Peru to pharmaceutical and agricultural chemicals.
Regarding the permitted acts in relation to a patented invention covered by the exemption, these also vary from country to country. For example, in Argentina, Costa Rica, the Dominican Republic, El Salvador and Paraguay, the “use” of the patented invention or “acts” necessary to obtain the marketing approval are permitted under the exceptions. However, the respective laws do not specify which uses or acts are included in the exception.
In some other countries, permissible acts within the exemption include “selling,” “offering for sale” (Colombian and Peru), “import” and “export” (Chile, Colombia and Peru).
According to the draft document by WIPO´s Standing Committee on the Law of Patents, the main challenges that countries face when implementing the Bolar exception relate mainly to the uncertainty about the scope of the exception in the national laws and the lack of awareness about the exemption among potential users who might benefit from it.
Source: www.wipo.intRead More
by Moeller IP Advisors
On March 8, 2018 the project IP Key Latin America was officially launched at the San Martin Palace in Buenos Aires, Argentina. IP Key Latin America is a collaborative project of partners with the goal of increasing awareness of the benefits of intellectual property. In particular, the group spotlights IP as a key to growth and job creation as well as supports increased IP protection and enforcement from Mexico to Chile and throughout the Latin American region.
Through its activities, IP Key Latin America will support international firms, especially EU enterprises, doing business in the region. These efforts will improve IP protection in LATAM, which will further encourage European companies to invest in Latin America. For European clients this means more legal certainty and quality in IP protection. By close cooperation with Latin American stakeholders and the involvement of academia, enforcement, industry and judicial authorities, the IP Key project will:
- Cover the full intellectual property lifecycle;
- Encompass a wide spectrum of IP rights; patents, trademarks, designs, geographical indications, copyright, trade secrets and plant varieties;
- Focus on IP enforcement, collaborating with enforcement authorities to train Latin American judges dealing with intellectual property matters;
- Provide and extend access to online IP search database to increase the global transparency of IP rights
Moeller IP Advisors was represented at the launch event by Thomas Messerer and José Santacroce. The project leaders, Pedro Duarte, project leader in Buenos Aires and Ricardo Ferreira, deputy project leader in Mexico also were in attendance. Other important participants in attendance included Antonio Campinos, Executive Director of the European Union Intellectual Property Office (EUIPO); Aude Maio-Coliche, Ambassador of the European Union in Argentina;Dámaso Pardo, President of the National Institute of Industrial Property in Argentina (INPI);Miguel Ángel Margáin, Director General of the Mexican Institute of Industrial Property (IMPI) and representatives of the European Commission and the EU Delegations in Latin America.
Moeller IP Advisors will cooperate with EUIPO and IP key project managers, thereby signaling our dedication to helping and improving IP matters in Latin America.
Please follow future blog posts regarding important developments.
The Madrid Protocol (MP) has allowed the owners of trademark registration to protect these in several countries by a simple application before their local or regional trademark office. Of course, the original application country and the ones designated thereof must be part of the MP.
The protocol has been in force since 1996, and ever increasing numbers of countries adhere to it (see below for a list of all the signatories).
In Latin America, only Antigua and Barbuda, Colombia, Cuba and Mexico have signed on to the agreement, and consequently only these countries can be designated for the protection extension that the MP allows. It is expected that other Latin American countries will become parties to the protocol over time.
However, the new application does not grant automatic registration of the mark. In fact, it works as a whole new application, which figuratively is filed by the World Intellectual Property Office (WIPO), before the local IP authorities, on the applicant’s behalf.
As a consequence of this, the local trademark offices will examine the application with the same severity as they would a regular/local trademark application. In this examination, the office can either admit the application for registration or reject it, based on any relative or absolute ground, as foreseen in the local legislation.
Should the request for protection extension be rejected, a provisional refusal resolution will be issued, and notified to the WIPO, which in turn will notify the applicant. Here is where the applicant will have to contact a local trademark specialist in order to get an assessment and advice on how to overcome this provisional refusal. The reply to this resolution must be filed by an agent from the country where the application was rejected.
After this brief explanation, it is important to reflect on whether or not it is recommendable to require the Madrid Protocol protection extension directly. Although many applications are admitted by the local Trademark Offices, many are not, and this is because each one has individual criteria, and trademarks are often rejected based on a prior mark that would not have been considered as confusingly similar in another country.
Consequently, a prior analysis of these matters, before requiring the extension the applicant should spend some time and money analyzing whether it is possible to encounter some conflict, and consequently be better to get advice beforehand is recommendable. Before requiring the extension of an International Registration, it is suggested to contact a local trademark specialist, who can conduct a thorough and full availability search for the trademark that the applicant is interested in, and advice on the best way to proceed.
If a prior trademark comes up, the local specialist can provide ideas for obtaining the registration, by including other elements, or with different legal services, such as prior negotiations or legal actions.
Although these prior measures might be considered unnecessary, and perhaps even as an excessive expense, it is important to highlight that they may result in a smoother registration procedure, which overall may be cheaper than one were posterior assessments and appeals need be filed on an urgent basis.
Furthermore, by foreseeing conflict, and doing everything possible to avoid it, it may be possible to save months, or even years, in the registration procedure.
In short, despite the fact that requiring the territorial extension of an International Registration may sound like the easiest and cheapest way to obtain trademark protection (and sometimes is), it is highly recommendable to consult with local experts on the chances to reach registration, and on possible courses of action, in order to avoid posterior conflicts later in the process.
For another insight on the consequences of the implementation of the MP, please see Laura Moreno’s piece on the matter posted previously in our blog: https://www.moellerip.com/madrid-protocol.
List of signatories up to Jan. 13, 2017: