Welcome to our blog for Intellectual Property Law and Practice in Latin America!
¡Bienvenidos a nuestro blog de Derecho y Práctica de la Propiedad Intelectual en Latinoamérica!
Bem-vindo ao nosso blog sobre Direito e Prática de Propriedade Intelectual na América Latina!

Friday 18 March 2016

Patricia Covarrubia

Brazil: IPRs applications and a word in TT contracts

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Some statistics are available from the Brazilian (INPI) indicating and releasing some numbers in regards to its services in February 2016.

The following applications are noted: 2,372 patent deposited; 11,626 trade marks; 498 industrial designs; 91 computer programs; and 81 applications for registration of contracts technology (technology transfer). INPI observes that patent applications were unchanged as compared to those in January. In the case of trade marks and computer programs applications there was an increase if compared with same time in 2015. There was however a decline in applications for industrial designs and TT contracts.

Image result for brazilA discussion on TT contract
In Brazil TT contracts (incl. technical services and technical assistance) and similar contracts must be registered with INPI to have effect on 3rd parties. But note that INPI neither annotates agreements nor issues certificate of registration for the license of non-patented proprietary technological knowledge.

Also note that INPI assessment and approval of TT and IP licensing agreement is mandatory for the purposes of a) authorizing remittance of royalties to foreign licensor, grantor of IPRs recognized in Brazil; b) trigger tax deductibility by the Brazilian party of amounts paid in connection with IP license, acquisition; and c) entitle the Brazilian party to enforce licensed, granted IP rights.

After INPI’s registration, agreements must be registered with the Central Bank of Brazil (Law No. 4,131/1962 regulates foreign capital in Brazil).
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Wednesday 16 March 2016

Patricia Covarrubia

Measuring the Strength of IP Protection: we need your help

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Reading an update on linkedin one notices that “The European Observatory on Infringements of Intellectual Property Rights, on behalf of the EU Commission (DG Trade), is launching a second survey of EU entities with an interest in the protection and enforcement of Intellectual Property Rights (IPR) in third countries.”

By collecting info from interested parties a “reality of IPR protection and enforcement in various third countries” can be built. The info will then be used to “provide assistance in preparation for negotiation and discussion with these countries.”

If you have an interest and/or knowledge on a non-EU country jurisdiction (it is you Latin and Caribbean (LAC) countries) do please complete the on-line survey (one per country). The survey started to run last Monday and will be available until the 31 May 2016 (accessible here).

Let’s digest this
In a recent presentation that I did at ELAN, Brussels 8th March, after explaining the topic of technology transfer and IPRS and looking the process in 5 selected Latin American jurisdiction, one question remains: will an invention/creation be protected as a matter of fact?

It is indeed a valid question. Legislation in LAC fulfil international standards: adapting national legislation in accordance with TRIPS (WTO) and many other international agreements administered by WIPO. Moreover, many countries have harmonized the law among their own trade bloc (e.g. CAN Decision 486) and others have stricter rules after signing a bilateral agreement. Yet, this does not give you the whole picture: legislation alone cannot measure the strength of IP protection. For this reason, WIPO recently commissioned distinguished international economists to do a study on the economics of IP. They acknowledged that this was a problematic matter since most of the studies in this area are “based on laws as written rather than enforced.”

Then it is suggested to observe the World Bank data which provides a variety of measures for a country. In the presentation, and using this point, I proceeded to build a chart for the 5 countries that I was studying , namely Brazil, Chile, Colombia, Mexico and Peru. I added to these countries the host country of the date, that is Belgium, so that the audience could compare and contrast the statistics and data. The chart reflected the very poor state of the countries’ regimes (exception been Chile which was very similar to that of Belgium). The indicators that I selected were: Control of Corruption; Government Effectiveness; Regulatory Quality; and Rule of Law. The aggregate indicators were ‘estimates’ giving the selected country's score in units of a standard normal distribution, ranging from -2.5 to 2.5. The latest data came from 2014 and I looked at 3 years (from 2012-2014) to see and establish a pattern.

Hopefully, the numbers do speak for themselves. And because of this, we encourage you to participate in the survey.

Why? The reason for you to participate in the survey
The EU Commission aims to tackle the issues noted in the survey and plans to take action by:
• Ensure that IPR chapters in bilateral trade agreements offer adequate and efficient protection for right-holders and address key weaknesses in partner countries' IPR systems while calibrating commitments to third countries’ level of development;
• Ensure the Commission can make recourse to dispute settlement mechanisms or other remedies where the EU's rights under international agreements are infringed;
• Continue and where possible enhance ‘IP Dialogues’ with key third countries; leverage high-level trade and political dialogues to ensure progress on identified IPR issues;
• Provide and promote awareness of appropriate IP-related technical assistance programmes to third countries, including on the possible use of IP flexibilities; leverage the expertise of relevant international organisations in implementing technical assistance programmes;”

Among others [actions points are found at page 19 on this report here).
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Tuesday 15 March 2016

Patricia Covarrubia

Technology Transfer: linking the academy with the industry

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The Mexican Institute of Industrial Property (IMPI) notes in its webpage the importance of the relationship between academia and the industry for the opportunity to market the research conducted in the country. Promoting this occurrence then, during the 1st March until the 10th March took place the 3rd edition of Academy training Transfer and Commercialization of Technology for the Americas aiming “to develop human resources for high-performance transfer activities and commercialization of technologies, especially in the areas of intellectual property, technology assessment, business plan, business models of technology, commercialization of technologies, among other topics.”

The event was seen as a great opportunity to exchange information among the participants. IMPI’s Director General observed that approx. 52% of Mexican patent applications are made by research centers and universities, acknowledging the importance of strengthening the links among the administrative offices granting patents and the industry as well as understanding the needs of the industry. The Director also noted that in Mexico, “innovation policies are associated as instruments of public policy and play a key role in promoting Mexican creativity,” and thus, noting the relevance of the IP system.

Image result for wipo pphMexico is a member of the Patent Cooperation Treaty (PCT) known as international patent. There are more than 20 Latin American countries that are members of the PCT allowing members to pursue patent protection for an invention simultaneously in a number of countries by filing a single international patent application, However, note that the granting of patents remains under the control of the national IPO (called the ‘national phase’). IMPI is the only Latin America office which has signed an agreement with the European Patent Office taking advantage of a fast-track examination procedures in the national phase i.e. Patent Prosecution Highway. As of May 25, 2010, the USPTO has eliminated the fee for the petition to make special under the PPH programs. Also there is a PPH pilot program between the USPTO and the IMPI that commenced on July 1, 2015, and will run for a period of one year ending on June 30, 2016 (more info here).
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Monday 14 March 2016

Patricia Covarrubia

University of Buckingham: Publication of the week

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Patricia Covarrubia, “Protection of non-agricultural GIs: a window on what is happening in Latin America”, European Intellectual Property Review, E.I.P.R. 2016, 38(3), 129-131.
This piece examines “the laws in South American states on the protection of geographical indications (GIs) relating to non-agricultural products, including textiles and craft works. Presents data on the number of such GIs that are registered proportional to the agricultural product GIs. Considers why these states extend GI protection to non-agricultural products. Notes that a proposal to do likewise is under consideration in the EU.”
Dr Covarrubia compares different national legislations in Latin American countries as well as observing the Agreement on Trade-Related Aspects of Intellectual Property Rights 1994 (TRIPS, WTO) and the Lisbon Agreement for the protection of appellation of origin and their international registration (WIPO).

Image result for geographical indications latin america iptangoThe publication is based on a paper presented in September 2015 at the Symposium on Geographical Indications (GIs), sponsored by Grana Padano and CIIPM. The symposium covered the policy aspects as well as the practical implications, challenges, and opportunities that GI involves. Nick Coppola who is currently writing his PhD on "The EU Agricultural Quality Policy Reform" was the one that organized such a wonderful event (a nutshell of the event can be read here). Nick has also wrote a couple of post for this blog in the topic of GIs. Indeed, we can not wait to read his thesis which surely will become a monologue published by a reputable editorial in the UK (hopefully I will read it before it becomes expensive).

For more information on GI in Latin America, specifically in the trade bloc Mercosur, there is a webinar provided by the Latin America IPR SMEs here.
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Patricia Covarrubia

A helping hand for micro and small enterprises

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The Brazilian National Institute da Propriedade Industrial (INPI) together with the Ministry of Development, and the Industry and Foreign Trade (MDIC), have signed a technical cooperation agreement with the Brazilian Support Service for Micro and Small Enterprises (Sebrae).
Image result for small and medium enterprisesThe agreement will be valid for three years and aims to make small business more competitive and innovative, “stimulating the development of technologies and the use of technological information contained in patents.” The agreement will see  document production such as: fact-sheets, guidelines, tutorials and other material on industrial property to guide enterprises on the use of theirs assets, and how to request applications for industrial property among others.

INPI informs the public the significance of registering a trade mark or protect a patent which sometimes if is “forgotten or considered unnecessary to safeguard the company's name or its invention.”

Source INPI.
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Sunday 13 March 2016

Patricia Covarrubia

Copyright registration goes online

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The Peruvian National Institute for the Defense of Competition and Protection of Intellectual Property (INDECOPI) is promoting the online application for copyright.

Image result for registration onlineThe ‘Virtual Registry of Works’ is a friendly platform, it is accessible anywhere and at any time (it operates 24hrs). INDECOPI notes that the system allows registration of works in 24 hours if the application does not present any observations. Payment can be done also online by credit card or through the Banco de la Nacion.

There is an online tutorial on how to use this platform (here).

While registering a work is not mandatory in Peru, it is highly recommended to do so to facilitate prove of entitlement and date of creation.

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Wednesday 2 March 2016

Patricia Covarrubia

Genetic resources and TK: Peruvian IPO ‘will look for you, will find you, and will kill your patent’

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The Peruvians claim to be the leader in the protection of genetic resources and Traditional Knowledge (TK). This recent statement was submitted to the Asean-Pacific Economic Cooperation (APEC) member economies claiming that the Peruvian Commission Against Biopiracy (INDECOPI) has developed a strong and solid system to prevent biopioracy.

Image result for taken movie i will find you
Biopiracy is known as the unauthorised collection and/or use for commercial ends of genetic resources or TK. The Biopiracy Commission aims to track and identify cases of biopiracy around the world. In this way it prevents and protects Peruvian biological resources and TK by opposing to patent applications abroad and/or challenges granted patents.

The Peruvian legislation in regards to biopiracy comes in the form of a trade bloc Decision i.e. the Andean Community (CAN, whose members are Bolivia, Colombia, Ecuador and Peru) Decision 391 ‘Establishing the Common Regime on Access to Genetic Resources’.

The report shows that the Biopiracy Commission has resolved 15 cases, 6 of which related to ‘maca’. Patents granted using ‘maca’ for the production of medicaments for the treatment of osteoporosis, insomnia and to increase testosterone and as a nutritional supplement were successfully invalidated after the Commission intervention in Japan, Korea and Europe. Other cases have been successful at early stages since the Biopiracy Commission has opposed to the patent applications.

The president of the National Commission Against Biopiracy noted “the Peruvian State has sovereign rights over their genetic resources; while indigenous peoples have rights to the collective knowledge they have created, developed and preserved through the centuries.”

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