Highlights of the Amendments to Industrial Property Law No. 351
As of the date of amendment of Industrial Property Law No 35, Panama has ratified the following international treaties and conventions:
- Budapest Treaty on the International Recognition of the Deposit of Microorganisms.
- Patent Cooperation Treaty (PCT)
- International Convention for the Protection of New Varieties of Plants, December 2, 1961, revised on November 10, 1972, October 23, 1978 and March 19, 1991 at Geneva.
- Trademark Law Treaty (TLT).
Patentability of Inventions
Only products and/or processes may be claimed as inventions.
Patentable products may include, without limitation,any substance, composition or material, and any article, apparatus, machine, equipment, mechanism, device or any other matter or tangible outcome, as well as any of their components.
Patentable processes may include, without limitation,any method, system or sequence of steps leading to producing or obtaining a product or a result.
Exclusions from Patentability
- Theoretical or scientific principles;
- Findings that consist in making public or disclosing something already existing in nature, even though it was previously unknown;
- Plans and methods for carrying out mental processes, playing games, doing business or economic principles;
- Software programs per se;
- Forms of presentation of information;
- Aesthetic creations and artistic and literary works;
- Surgical, and therapeutic treatment or diagnostic methods applicable to the human body and to animals. This provision does not apply to products, in particular to substances or compositions, or to the invention of apparatuses or instruments for implementing such methods;
- The juxtaposition of known inventions or the combination of known products, changes in shape, size or material, unless it is possible to actually demonstrate their compliance with the requirements of novelty, inventive step and industrial application.
Exceptions to Patentability
- Inventions whose commercial exploitation should be necessarily prevented to protect public order, national security, morality and social mores, human, animal and plant life or health, or to avoid severe harm to plants or to the environment are not patentable
- Plants, animals and essentially biological processes for the production of plants or animals unless they are non-biological or microbiological processes
- Plant varieties and animal species and breeds
- Biological material as found in nature2
- The living matter constituting the human body
- Plant varieties (note: registrable under plant breeder’s right rules)
Exceptions to Patent Rights
The right granted by a patent cannot be enforced against any third party using the subject matter protected by the patent only to generate the information required to support an application for a permit to market a pharmaceutical or agrochemical product in Panama.
Any product produced under the preceding paragraph may only be manufactured, used, sold, offered for sale or imported into the country with the purpose of generating the information required for a permit to commercialize the product once the patent has expired. In addition, the product may be exported only for purposes of complying with marketing permit requirements in Panama.
Patents are granted for a term of
20 years as from their filing date
, provided that the statutory fees are paid on time.
Annuities are paid every five years. The first payment must be made together with the patent application and the following payments must be made every five years, counted from the filing date. Payment can be made at any time before the expiration of the abovementioned five-year period. There is a grace period of 6 months within which the five-year period owed may be paid with a surcharge.
In the case of national phase filings of a PCT application, which are valid for 20 years counted from the international filing date, although this has not been provided for in the amendments to the industrial property Law, it is reasonable to infer that the five-year period shall be calculated from the international filing date. This will probably be confirmed in due course.
Extended protection for unreasonable delay
The Directorate General of the Industrial Property Registry (DIGERPI) will extend the protection term of non-pharmaceutical patents for delays in granting attributable to the Office.
At the request of the owner of the patent and within six months from granting, the Office will grant an extension, provided there has been an unreasonable administrative delay in prosecution of a particular case.
The total period of additional protection granted may not exceed seven years and six months.
Exploitation of the Invention
For the purposes of this Law importation of the patented product and its subsequent distribution in Panama will be considered working of the invention.
Foreign language applications
Applications may be filed in a language other than Spanish, but a translation into Spanish should be submitted within a period of two months.
Observations by third parties
Once the application has been published, any person may submit reasoned and documented observations , which are considered useful to determine whether or not the patent application should be granted. This can be done from the day after publication of the patent application in the Official Gazette up to two months after publication of the report on the state of the art.
The person lodging observations will not thereby become a party to the patent prosecution.
Request and performance of substantive examination
The request for a substantive examination may be made by the applicant from the filing date of the application until two months after being notified of third party observations.
If applicable, the Patent Office may accept or request from the applicant the results of the substantive examination or its equivalent carried out by foreign Patent Offices, as well as the International Search Report.
Prosecution of international patent or utility model applications
The PCT Receiving Office in the Republic of Panama will be DIGERPI, regarding applications filed by nationals or residents in Panama.
DIGERPI will be the Designated and/or Elected Office when Panama is a Designated State, in order to obtain a national patent or utility model, under the Patent Cooperation Treaty.
Filing in Panama of a national phase application for a patent or utility under the Patent Cooperation Treaty, should be make before expiration of a thirty-month period counted from the priority date.
If the international application does not claim any priority, it may be filed with DIGERPI before expiration of a thirty-month period counted from the international filing.
Validity term of PCT applications
The validity term for patents and utility models filed in the national phase of PCT in Panama, shall be counted from the relevant international application filing date.
Cancellation and statute of limitations
A patent or utility model registry may be declared invalid in any of the following cases:
- When the person who was granted the patent is not the inventor or its assignee.
- When patent granting or registration was in breach of patentability rules.
The statute of limitations for any cause of action for invalidity of a patent or utility model is of eight years, counted from granting date.
1 Author: Gabriela Hanak and Miriam Silvestri, Moeller IP Advisors.
2 Although microorganisms per se are not mentioned, it can be inferred that a microorganism isolated from its environment or modified could be patented