IPTango

Tuesday, 8 November 2016

Ecuador: encouraging IP registration by local applicants

Patricia Covarrubia November 08, 2016 No comments:

Ecuador's Intellectual Property Institute has reduced the fees for some of its services. According to Resolution 001-2016-CD-IEPI fees to file and maintain a patent have decreased by approx. 90%. The said resolution reforms the previous ones i.e. No. 003- 2010 CDIEPI (06/05/2010) and No. 006-2012 CDIEPI (23/05/2012).

There was no doubt that the Ecuadorian Institute of intellectual Property (IEPI) fees were costly. Some saw this “as a tax on foreign IP owners rather than as a means of stimulating and encouraging the use of IP registration by local applicants.” Therefore one can question if this is a step forward in the building of the proposed ‘Código Orgánico de Economía Social del Conocimiento, la Creatividad y la Innovación (Organic Code of Social Economy of Knowledge, Creativity and Innovation) -- known as ‘Codigo Ingenios’ (Intellects Code). This bill went to the Ecuadorian Assembly back in June 2015 as an initiative of the Ministry of Higher Education, Science and Technology (Senescyt).

The reduction is seen on: patent application fee (until 10 claims); additional claim after the 10th; the renewal fees per year; and the examination fee up to 20 pages (and then, a 10% additional fee per sheet).

The graphic that you see, the original is available at the Latin America IPR SME Helpdesk, an IP fact-sheet of the country – next to the graphic (in red) the new fee is reflected.

Resolution 001-2016-CD-IEPI entered into force following its publication in the official registry(which was Friday 19 August, 2016 - N° 822).

Stop the press: job vacancy in Peru

Patricia Covarrubia November 05, 2016 No comments:

Ann Chaitovitz, is the USPTO intellectual property (IP) attaché based in Lima. She kindly has published in linkedin an announcement that may be of interest to our readers in Peru.

At the moment the US Mission Lima is looking for an “eligible and qualified intellectual property attorney” for the position of Commercial Specialist.

The full job announcement can be found here.

Thanks Ann for passing the info.

TPP: civil disturbance is foreseen in Latin America

Patricia Covarrubia November 02, 2016 No comments:

The 04 of November is set to be the date where several people around Latin America are taken the streets. Organisations in Argentina, Colombia, Chile, Mexico and Peru are planning to take this day to mobilize for ‘democracy and rejection of trade agreements' specifically the Trans-Pacific Partnership (TPP) and the Trade in Services Agreement (TISA which is a trade agreement presently being negotiated by 23 members of the World Trade Organisation (WTO) including Latin America countries such as Chile, Colombia, Costa Rica, Mexico, Panama and Peru). A year ago 12 states ratified the TPP. From Latin America they were: Chile, Mexico and Peru (early post here).

The call follows rejection of restrictive measures contained in these trade agreements. Accordingly the measures threaten the access to generic drugs and biosimilars, impose new trade conditions in the seed market, and restrict freedom of expression, among others. But this appears to be one side of the story -- the reason: the Office of the US Trade Representative asserts that the TPP will allow its members to “draw on the full benefits of scientific, technological, and medical innovation, and take part in development and enjoyment of new media and the arts.” However, one cannot forget the headline of this sentence “Supporting American jobs by promoting America’s innovation advantage.” This is followed by assertions such as “strong and effective protection and enforcement of IP rights is critical to U.S. economic”. These types of expressions seem to be one-sided i.e. the benefit is first for the US. However, in the US Trade Representative report we notice declarations such as that the TPP “Promote innovation and the development of new, lifesaving medicines”; “Promote affordable access to medicines, taking into account levels of development among the TPP countries and their existing laws and international commitments.”; and concluding that all IP “commitments are aligned with the Doha Declaration on TRIPS and Public Health, affirming the rights of countries to take measures to promote public health.” But we all know too well that such commitments when transposed to bilateral agreements are more than what they say…one is familiar with the term TRIP-Plus.

There are indeed two sides of the story and this is tracked by the fact of the claimed ‘secret negotiation’ that went on which was for many years a source of controversy (see news here and here).
Apart from this debate it is also noticeable some other patent related issues that can also be of controversy for some LA countries:

Known product: TPP requires members to confirm that patents are available for either ‘new uses of a known product, new methods of using a known product, or new processes of using a known product’.

Chile IP Law N° 19.039: Art 33 (e) notices that new uses of articles, objects or known elements may constitute a subject matter of invention provided that the said new use solves a problem without prior equivalent technical solution.
Mexico IP Law (last reformed published on DOF 01-06-2016): not stipulated by lawm thus do not recognise second use as a new invention.
Peru: Art 21 Decision 486 CAN notices that already patented products or processes, including the state of the technique, are not subject matter of new patents, for the simple fact that there is a new use which is different from that originally contemplated by the initial patent.
Bear in mind that second use patents are not allowed in any of the Andean Community States (Colombia, Ecuador, Peru and Bolivia). CAN legislation is supranational.

Grace period for disclosure: TPP grants 12 months prior the Patent Application. This is in cases where the ‘disclosure’ is done by the applicant or a third party that obtained the information from the applicant which will not be taken into account when evaluating the novelty of the patent.

Chile: Art 42(a) IP law notes that disclosures made within 12 months prior to the submission of the application will not be considered for purposes of determining the novelty criteria if the public disclosure was made by the applicant of the patent, or if the disclosure was derived from abuse and unfair practices.
Mexico's Law states that: “The disclosure of an invention shall not affect that is still considered new when within twelve months prior to the filing date of the patent application or, where applicable,
the recognized priority date, the inventor or his assignee have disclosed the invention, by any media, for the implementation of the invention or because they have exhibited a
national or international exhibition. When the corresponding application shall include the
substantiating documentation under the conditions established by the regulations of this Act.”
Peru: Art 17 Decision 486 CAN notes that it will not be taken into consideration disclosures occurred within the year preceding the date of the submission of the application if it had been raised by the applicant in cases where such disclosure come from “the inventor or his successor in title; a competent national office which, in violation of the rule governing it, publishes the content of the patent application filed by the inventor or his successor in title; or, a third party who obtained the information directly or indirectly from the inventor or his successor in title.”

Adjusment or Extension?

'Patent Term Adjustment' (PTA) – some literature called this a patent ‘extension’, I do prefer to call it as it is: an adjustment given due to unreasonable administrative delays during the issuance of the Patent. TPP provides for the possibility of requesting a PTA.

Chile: Article 53bis1 IP Law already grants a PTA. A right holder may request within 6 months of the patent granted, a Supplementary Protection due to unjustified administrative delays.
Mexico: silent. The law does not cover this issue.
Peru: Decision 486 CAN does not cover this issue.

Many debates are seeing on regards to public health and we have covered this several times in this blog. This time it was time for a change - to cover a little bit of the procedural issues and some tips for enterprises when registering their patents abroad.

A monetary push: Patent applications

Patricia Covarrubia October 31, 2016 No comments:

Colombia was the only Latin America country chosen by the World Organization for Intellectual (WIPO) to implement the Program of Assistance to Inventors (PAI). Other countries chosen were Morocco and Philippines.

The program, as can be guessed by its name, give assistance to investors. In this particular case the assistance in in the form of free legal advice to natural and legal persons (of limited resources) to complete the process of filing patents.

The pilot of this program started back in 2015 and recently the Deputy Superintendent for Industrial Property (SIC) visited Geneva, Switzerland to present the balance of the program. It counted 11 projects and 24 lawyers have already been chosen by WIPO to provide services pro bono.

According to SIC, the project will also help to “reduce the level of dropouts in the patent application”. In Colombia the withdrawing of patent applications is approx. 50%.

Economic growth of a country: technology transfer

Patricia Covarrubia October 27, 2016 No comments:

From Stephany Soto, Clarke Modet & Co we hear of a Plan for Technology Transfer (TT)in Peru. The plan is taken effect from 2016 to 2021 and the aim is to promote technological development in the country. This plan is to contribute to the existing one called ‘National Plan for Science, Technology and Innovation for Competitiveness and Human Development (PNCTI 2006-2021)’.

Webinar available at Latin America IPR SME Helpdesk

Technology progress is linked to the economic growth and high income in countries and this plan involves both the private and economic sector. Universities will play a crucial role since they encompass ‘Research’. Research usually leads to development of new products and processes which are followed by commercialisation - providing economic returns. Miss Soto says “The plan was created with the aim of promoting the development and transfer of technological innovations in companies raising the competitiveness and productivity, added value with criterion of economic and environmental sustainability”.

In this line, the State intention is to organise “technology meetings, technology fairs and other events to create networking among entrepreneurs and researchers in order to make easier the interaction and promote collaborative projects.” This will hand in hand with imparting training in intellectual property (IP).

Why IP should matter for TT?
Technology is valuable, provoking copies or imitations. If technology is copied and/or imitated it reduces the possible profits of the inventor: and who would like to invent without rewards where time and money have been spent and you will not have recognition?

What IP does it’s to encourage innovation by (the government) granting successful inventors a temporal monopoly over the invention.

In Peru if companies have a TT agreement/contract, such license must be in writing and registered before the INDECOPI to be enforceable before 3rd parties. And it is good to know that Peru is member of the PCT.

In closing I would like to see more policies in TT and of course giving incentive to this matter. For example in Costa Rica there is a Law (No. 20.241) on R&D which provides incentives: 35 % tax credit on the amount invested in R&D, when duly certified by the National Production Development Corporation; remaining 65 % can be considered as ‘expenses’.

Red card for Mexican composer: passion for football

Patricia Covarrubia October 26, 2016 No comments:

From Mexico and Spain we read a debate about a potential case of copyright infringement.
The Mexican football club ‘Club America’ has released this month a new hymn celebrating its centennial. The song was launched during the half time of the game against Tijuana on Saturday October 15th.

The hymn created much controversy in social media since it is claimed that the hymn is similar to another football club, that is the ‘Sevilla’ from Spain (the hymn can be heard here).

Image result for club america himno centenario

laixb.com

The authorship of the alleged infringed song belongs to the Mexican group Matute, headed by Jorge D'Alessio. After the social media war, he claimed that "there is no copying or plagiarism" in the hymn while the football club separated from any responsibility. The band also noted that there was no ‘intention’. In this regards it is important to note that intention is not needed for an action of infringement since it is strict liability.

Finally, the Mexican football club released a communication stating that "although the musical work is an original work, it has caused some discomfort, therefore this song will never be used by the Club". Why this reaction? the work was commissioned and depending on the contract, they may be the owner of the song and even if the club wants to separate itself from this controversy and keep using it, they are liable (Art 231 of the Mexican Federal Law on Copyright) .

Jorge D'Alessio also published a statement: “Club America asked me to conduct, through the figure of commissioned work, the anthem of the 'centenary', not the official anthem, which I lovingly did as I am fond of the America. You should know that there is no mutilation, copy, distortion, or so-called plagiarism, nor in the letter or the music composed.” It continues “experts in the field are already making the necessary expertise in order to compare the two compositions.”

Good to know:

The Mexican Federal Law on Copyright for the purpose of ensuring legal security of authors and owners of copyright, advice authors to register the work in the Public Copyright Register (art 162). However the same provision of law clarifies that even if literary and artistic works and neighbouring rights are not registered, the law still protect them. This goes in line with the Berne Convention which grants this right without the need of any formality.
Practice of infringement can be for direct or indirect profit-making purposes (art 231).
The use of language in D’Alessio’s statement i.e. ‘distorted, or mutilated’ are type of infringements covered in art 231(iv).
The author of a work is the perpetual owner of the moral rights in works created by him (art 18).

Sources and more info here, here and here.

In Peru the Right of the Authors are enhancing

Patricia Covarrubia October 10, 2016 No comments:

From the Peruvian National Institute for Defence of Competition and Protection of Intellectual Property (Indecopi) I read 3 different set of news but all relating to the same: the ‘right of authors’.

1.- GUIDANCE: A reminder to all music producers and creators that there is a booklet providing guidance and promoting awareness of the rules and respect for intellectual property: ‘Guia especializada de derecho de autor para musicos’.
The booklet is written in a simple way explaining the ‘rights of authors in their musical works and how they can obtain economic benefit of its creation’. It is accessed here.

2.- NO TO PIRACY: In light of the national film premiere La peor de mis bodas ('The worst of my weddings), INDECOPI ‘urges citizens to support national film production, rejecting any pirated material’. INDECOPI acknowledges the effort made by the Peruvian people in putting the movie together including artist, directors and production team, and thus, invites the public to support the movie and go to the cinema.

3.- COUNTING YOUR PENNIES: INDECOPI installed a web application called 'Sintoniza’ (Tune). It allows property’s owners (such as bars, shopping centres, dance schools, etc.) to see an estimate of the rate it would have to pay for the use of national and international musical repertoire - administered by collecting societies. The application is free of charge and it is said to be an easy and comprehensive tool for the general public. INDECOPI says that through this tool, they encourage ‘the payment of duties that by law, shall receive authors, artists and producers.’

INTA abrirá una Oficina de Representación para LATAM en Chile en 2017

Rodrigo Ramirez Herrera @ramahr October 05, 2016 No comments:

La Asociación Internacional de Marcas (International Trademark Association, INTA) aprobó la creación de una Oficina de Representación para América Latina en Santiago de Chile, durante la reunión de la Junta Directiva en Beijing, China, a principios de este mes. A través de esta oficina, que se inaugurará oficialmente en el primer semestre de 2017, la INTA atenderá a sus miembros, tanto en América Latina como en el Caribe, y a aquellos en el extranjero que quieran iniciar o expandir sus operaciones en estos mercados.

La expansión internacional es una prioridad estratégica para la INTA y el establecimiento de la Oficina de Representación para América Latina le permite a la INTA estar más cerca de cumplir este objetivo. Algunas de las prioridades iniciales de la Asociación para esta oficina son:

1. Una interacción más estrecha con los miembros de América Latina y el Caribe.

2. Mejor participación política.

3. Desarrollo de relaciones más sólidas con las oficinas y las asociaciones de marcas a nivel local y regional.

4. Más programas educativos.

Santiago fue seleccionada como sede de la Oficina de Representación para América Latina después de un extenso estudio de debida diligencia. “Por una serie de razones, Santiago es un lugar ideal para esta oficina y estamos muy satisfechos con la decisión”, señaló el director ejecutivo de la INTA, Etienne Sanz de Acedo. “Un número significativo de organizaciones internacionales de alto nivel tienen oficinas en Santiago y es una buena ubicación para que una organización como la INTA establezca una oficina. Desde esta oficina estaremos bien posicionados para atender a nuestros miembros en toda la región”.

La Asociación Internacional de Marcas (INTA) es la asociación global de los titulares de marcas y los profesionales dedicados a respaldar las marcas y la propiedad intelectual relacionada con el fin de proteger a los consumidores y promover un comercio justo y eficaz. Entre los miembros hay más de 6700 organizaciones de 190 países. En conjunto, ellos aportan casi 12 billones de USD al PIB mundial cada año. Las organizaciones miembros de la INTA representan a unos 30 000 profesionales de marcas e incluyen a los propietarios de marcas de grandes corporaciones, así como de pequeñas y medianas empresas, estudios de abogados, organizaciones no lucrativas, agencias gubernamentales e instituciones académicas. Los miembros de la INTA se benefician de los recursos globales de marcas, el desarrollo de políticas, la educación y la formación, y de la red internacional de la asociación. Fundada en 1878, la INTA tiene su sede en la ciudad de Nueva York, con oficinas en Bruselas, Shanghái, Singapur y Washington, DC, y representantes en Ginebra y Nueva Delhi.

Los miembros de la INTA en América Latina y el Caribe tienen su sede en Anguila, Argentina, Aruba, Bahamas, Barbados, Belice, Bermuda, Bolivia, Brasil, Islas Vírgenes Británicas, Islas Caimán, Chile, Colombia, Costa Rica, Curazao, Dominica, República Dominicana, Ecuador, El Salvador, Guatemala, Guyana, Haití, Honduras, Jamaica, México, Montserrat, Nicaragua, Panamá, Paraguay, Perú, San Cristóbal y Nieves, Santa Lucía, San Vicente y las Granadinas, Surinam, Trinidad y Tobago, Islas Turcas y Caicos, Uruguay y Venezuela.

Fuente: Comunicado INTA

A dining table full of goodies: the relevance of Geographical Indications (GI)

Patricia Covarrubia September 30, 2016 No comments:

You may think that I am gluttonous or better say piggish but I really love food. It is not the fact that I eat a lot (which I do) but I like and enjoy myself every time I eat. Even sitting now having my simple lunch in front of the computer, I am thinking 'this is the best creamy carrot soup ever made' (by my mother).

Image result for coffee plantation mosquito bites

The texture, the different flavours and fragrances that food provide us with, are to be appreciated. Perhaps I learned from a young age to value food... the preparation of the soil, the plantation, the harvest. I remember the no so pleasant mosquitoes when we were harvesting coffee but I also remember so vividly the best fresh coffee one could have.

Many countries claim to have dishes full of tradition and every time I visit a new country I will try national dishes (of course there are some that I have not enjoyed as much).
In this blog we keep reporting on GIs, the procedure, who got a new one, entitlements, infringements, but in any case we always mentione the importance and relevance that it has for the country, for the particular region and for its people. We sometimes acknowledge that a GI is not for everyone and that there is not always gold at the end of the rainbow. Yet, without a doubt if a product got that little certification i.e. GI label, it will turn heads. And it does so because the product that contains that GI label will tell you that it has a special quality and that such a quality is due to the geographical environment, including natural factors such as: climate, soil, minerals, water and the human factor. A GI is a cultural representation, a heritage.

I read therefore with enthusiasm that in Mexico, the ‘Grupo Sanborns’ is offering to the diners of their chain of restaurant, a menu which highlights the traditional Mexican dishes including particularly those that have a Denomination of Origin (DO). The news brought by the Instituto Mexicano de Propeiedad Industrial (IMPI) notes some of the agricultural products that customers will try such as: ‘Tequila, Mezcal, Arroz del Estado de Morelos, Vainilla de Papantla, Mango Ataúlfo del Soconusco Chiapas, Chile Habanero de la Península de Yucatán y Café Veracruz.’

In the same line, we heard from IMPI that they have granted the 15th DO to 'Cacao Grijalva' comprising 3 sub-regions and 11 municipalities. The quality is partly given due to domesticated forest which mirrors the rain-forest and prevents soil erosion. The climate is also accountable for the quality of the cocoa which is claimed to be in production since pre-Hispanic times.

More information here and here.