ANDEAN COMMUNITY

DECISION 486: Common Intellectual Property Regime


(Non official translation)

THE COMMISSION OF THE ANDEAN COMMUNITY,

HAVING SEEN:

Article 27 of the Cartagena Agreement and Commission Decision 344;

DECIDES:

To replace Decision 344 by the following Decision:
COMMON INTELLECTUAL PROPERTY REGIME  


TITLE I

GENERAL PROVISIONS
Index

On National Treatment

Article 1. - Each Member Country shall accord the nationals of other members of the Andean Community, the World Trade Organization, and the Paris Convention for the Protection of Industrial Property, treatment no less favorable than it accords to its own nationals with regard to the protection of intellectual property, subject to the exceptions already provided in articles 3 and 5 of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) and in article 2 of the Paris Convention for the Protection of Industrial Property.

Member Countries may also accord such treatment to the nationals of a third country under the terms of their respective domestic legislation.  

On Most-Favored-Nation Treatment

Article 2. - With regard to the protection of intellectual property, any advantage, favor, privilege, or immunity granted by a Member Country to the nationals of any other Andean Community Member Country shall be accorded to the nationals of all other Members of the World Trade Organization or of the Paris Convention for the Protection of Industrial Property.

The stipulation set forth in the preceding paragraph shall be applicable without prejudice to the reservations provided for in articles 4 and 5 of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS).  

On the Biological and Genetic Heritage and Traditional Knowledge

Article 3. - The Member Countries shall ensure that the protection granted to intellectual property elements shall be accorded while safeguarding and respecting their biological and genetic heritage, together with the traditional knowledge of their indigenous, African American, or local communities. As a result, the granting of patents on inventions that have been developed on the basis of material obtained from that heritage or that knowledge shall be subordinated to the acquisition of that material in accordance with international, Andean Community, and national law.

The Member Countries recognize the right and the authority of indigenous, African American, and local communities in respect of their collective knowledge.

The provisions of this Decision shall be applied and interpreted in such a way that they do not contravene the stipulations of Decision 391 and its effective amendments.  

On the Periods and Deadlines

Article 4. - The effective periods for carrying out the procedures stipulated in this Decision that are subject to publication or notification shall be counted as of the day following the notification or publication of the act involved, unless stipulated otherwise in this Decision.

Article 5. - When periods are given in days, these shall be considered working days, unless this Decision stipulates otherwise. If the period is stated in months or years, it shall be computed from date to date. If there is no day equivalent to the starting day of the period in the month of expiration, the last day of the month shall be considered the deadline. If the last day is not a working day, then the deadline shall be considered as having been extended to the following working day.  

On the Notifications  

Article 6 .- The competent national office may set up a system of notification to adequately communicate its decisions to the interested parties.

On the Language

Article 7. - Application petitions addressed to the competent national office shall be submitted in Spanish.

Article 8. - All documents that are processed by the competent national offices shall be submitted in Spanish. Otherwise, they shall be accompanied by unauthenticated Spanish translations. The competent national office may, however, dispense with the presentation of the translations of those documents should it deem this advisable.

On the Claim of Priority

Article 9.- The first application for an invention or utility model patent or for the registration of register an industrial design or a trademark that is validly filed in another Member Country or with a national, regional, or international authority to which the Member Country is linked by a treaty establishing an analogous right of priority to that established in this Decision, shall confer on the applicant or the applicant’s assignee the right of priority in filing for a patent or registration on the same subject-matter in the Member Country. The scope and effects of the right of priority shall be those provided in the Paris Convention for the Protection of Industrial Property.

The right of priority may be based on a previous application filed with the competent national office in the same Member Country, provided that a previous right of priority was not claimed in that application. In that case, filing a subsequent application claiming priority shall mean abandoning the previous application in respect of the subject matter that is common between the two.

Any application validly accepted for processing as provided for in Articles 33, 119, and 140 of this Decision or in such treaties as are applicable, is acknowledged to confer the right of priority.

In order to qualify for that right, an application claiming priority shall be filed within the following unextendible periods to be counted as from the filing date of the application whose priority is claimed:


a)
twelve months for patents on inventions and utility models; and,

b) six months for registrations of industrial designs and trademarks.


Article 10.- For the purposes of the previous article, a declaration shall be submitted accompanied by the pertinent documentation claiming the priority of the previous application and stating its filing date, the office to which it was submitted, when it was granted, and the number assigned to it, if known. The competent national office may prescribe the payment of a fee for processing priority claims.

The declaration and the pertinent documentation shall be submitted together with or separately from the application within the following unextendible periods to be counted as from the filing date of the priority claim:

a) in the case of patents on inventions or utility models: sixteen months; and,

b) in the case of applications for registration of industrial designs or trademarks: nine months.

Also to be presented are a copy of the application whose priority is claimed, certified by the issuing authority, a certificate attesting to the application filing date issued by the same authority, and, if applicable, the proof of payment of the prescribed fee.

No formalities in addition to those stipulated in this article shall be required for purposes of the right of priority.

Article 11. - Failure to comply with the deadlines, present the documents, or pay the fee shall result in the loss of the priority claimed.

On Discontinuance and Abandonment

Article 12.- The applicant may discontinue the application at any time during the process. Discontinuance of a patent or registration application shall bring the administrative proceeding to an end as of the declaration of conclusion by the competent national office and the assigned presentation date shall be lost.

If the discontinuance predates the publication of the application, that application shall not be published. In the case of patents on inventions or utility models or the registration of an industrial design, the information shall be kept confidential and may not be consulted without written consent from the applicant unless the time-limit set forth in article 40 has been reached.

Article 13. - The stipulations of the previous article shall be applicable to the abandonment of the application proceeding as pertinent.

TITLE II
ON PATENTS
Index

CHAPTER I

On Patentability Requirements

Article 14. - The Member Countries shall grant patents for inventions, whether goods or processes, in all areas of technology, that are new, involve an inventive step, and are industrially applicable.

Article 15. - The following shall not be considered inventions:

a) discoveries, scientific theories, and mathematical methods;

b) Any living thing, either complete or partial, as found in nature, natural biological processes, and biological material, as existing in nature, or able to be separated, including the genome or germ plasm of any living thing;

c) literary and artistic works or any other aesthetic creation protected by copyright;

d) plans, rules, and methods for the pursuit of intellectual activities, playing of games, or economic and business activities;

e) computer programs and software, as such; and,

f) methods for presenting information.

Article 16. - An invention may be deemed new when not included in the state of the art.

The state of the art comprises everything that has been made available to the public by written or oral description, use, marketing, or any other means prior to the filing date of the patent or, where appropriate, of the priority claimed.

Solely for the purpose of determining novelty, the contents of a patent application pending before the competent national office and having a filing date or priority application date earlier than the date of the patent or patent priority application under examination, shall likewise be considered part of the state of the art, provided that the said contents are included in the earlier application when published or that the period stipulated in Article 40 has concluded.

Article 17. - For the purposes of determining patentability, no account shall be taken of any disclosure of the contents of the patent during the year prior to the filing date of the application in the Member Country or during the year before the date of priority, if claimed, providing that the disclosure was attributable to:

a) the inventor or the inventor’s assignee;

b) a competent national office that publishes the contents of a patent application filed by the inventor or the inventor’s assignee in contravention of the applicable provision; or,

c) a third party who obtained the information directly or indirectly from the inventor or the inventor’s assignee.

Article 18. - An invention shall be regarded as involving an inventive step if, for a person in the trade with average skills in the technical field concerned, the said invention is neither obvious nor obviously derived from the state of the art.

Article 19 .- An invention shall be regarded as industrially applicable when its subject matter may be produced or used in any type of industry; industry being understood as that involving any productive activity, including services.

Article 20. - The following shall not be patentable:

a) inventions, the prevention of the commercial exploitation within the territory of the respective Member Country of the commercial exploitation is necessary to protect public order or morality, provided that such exclusion is not merely because the exploitation is prohibited or regulated by a legal or administrative provision;

b) inventions, when the prevention of the commercial exploitation within the respective Member Country of the commercial exploitation is necessary to protect human or animal life or health or to avoid serious prejudice to plant life and the environment, provided that such exclusion is not made merely because the exploitation is prohibited or regulated by a legal or administrative provision;

c) plants, animals, and essentially biological processes for the production of plants or animals other than non-biological or microbiological processes;

d) diagnostic, therapeutic, and surgical methods for the treatment of humans or animals.

Article 21. - Products or processes already patented and included in the state of the art within the meaning of Article 16 of this Decision may not be the subject of new patents on the sole ground of having been put to a use different from that originally contemplated by the initial patent.

CHAPTER II
On the Patent Owners

Article 22 .- The right to a patent belongs to the inventor and may be assigned or transferred by succession.

Patent owners may be natural or judicial persons.

If several persons make an invention jointly, they shall share the right to patent it.

If several persons make the same invention, each independently of the others, the patent shall be granted to the person or assignee with the first filing date or, where priority is claimed, date of application.

Article 23. - Without prejudice to the provisions of national law in each Member Country, in the case of inventions made in the course of an employment relationship, the employer, whatever its form and nature, may transfer part of the economic benefits deriving from the innovations to the employee inventors in order to promote research activity.

Entities receiving state funding for their research shall reinvest part of the royalties received from the marketing of those inventions to generate a continuing supply of research funds and encourage researchers by giving them a share of the proceeds from the innovations, in accordance with the legislation in each Member Country.

Article 24.- The inventor shall have the right to be cited as such in the patent or to oppose being so mentioned.

CHAPTER III
On Patent Applications

Article 25. - A patent application may cover only one invention or a group of interrelated inventions that constitute a single inventive concept.

Article 26.- Applications for patents shall be filed with the competent national office and shall contain:

a) the petition;

b) the description;

c) one or more claims;

d) one or more drawings, if needed to understand the invention which, shall be considered an integral part of the description;

e) a summary;

f) such powers of attorney as may be needed;

g) proof of payment of the prescribed fees;

h) a copy of the contract for access, if the products or processes for which a patent application is being filed were obtained or developed from genetic resources or byproducts originating in one of the Member Countries;

i) if applicable, a copy of the document that certifies the license or authorization to use the traditional knowledge of indigenous, African American, or local communities in the Member Countries where the products or processes whose protection is being requested was obtained or developed on the basis of the knowledge originating in any one of the Member Countries, pursuant to the provisions of Decision 391 and its effective amendments and regulations;

j) the certificate of deposit of the biological material, if applicable; and,

k) a copy of the document attesting to the transfer of the patent right by the inventor to the applicant or assignee.


Article 27.- The patent application petition shall be a form that shall include the following information:

a) the application for a patent grant;

b) the applicant’s name and address;

c) the nationality or address of the applicant and, should the applicant be a judicial person, the place of incorporation;

d) the name of the invention;

e) the name and address of the inventor, if a person other than the applicant;

f) the name and address of the applicant’s legal representative, if pertinent;

g) the signature of the applicant or of the applicant’s legal representative; and,

h) the date, number, and office of filing of any such application for a patent or other patent protection as may have been filed or obtained abroad by the applicant or assignee in respect of part or all of the same invention claimed in the application being filed in the respective Member Country, if pertinent.

Article 28 .- The description of the invention shall be sufficiently clear and complete to be understood and for the invention to be carried out by a person skilled in the art. The description shall contain the name of the invention and the following information:

a) the technological sector to which the invention refers or in which it shall be applied;

b) prior technology known to the applicant that would help the invention to be understood and examined and references to previous documents and publications that discuss the technology involved;

c) a description of the invention in such a way that the technical problem and the solution provided by the invention may be understood, explaining the differences and possible advantages with respect to previos technology.

d) a brief description of the drawings if there are any;

e) a description of the best method known to the applicant for carrying out the invention, with the use of examples and references to the drawings if they are pertinent; and,

f) a statement as to how the invention meets the condition of being capable of industrial application, if this is not clear from the description or the nature of the invention itself.

Article 29. - Where the invention refers to a product or a process involving biological material and the invention cannot be understood and carried out, as described, by a person skilled in the art, it must be accompanied by a deposit of the said material.

The material shall be deposited by the filing date in the Member Country or, where priority is claimed, the date of application. Deposits with an international authority recognized under the 1977 Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure or any other institution acknowledged by the competent national office as appropriate for this purpose shall be valid. In such cases, the name and address of the depositary institution, the date of deposit, and the number assigned by that institution to the deposit shall be included in the description.

The deposit of biological material shall be valid for granting a patent only if it is carried out in such a way that any interested person may obtain samples of that material by the date of expiration of the period stipulated in article 40, at the latest.

Article 30. - Claims shall specify the subject matter for which patent protection is sought. They must be stated clearly and concisely and be fully substantiated by the description.

Claims may be independent or dependent. A claim shall be independent when it defines the subject matter in respect of which protection is sought without referring to any previous claim. A dependent claim, on the other hand, defines the subject matter for which protection is sought by referring to a prior claim. A claim referring to two or more previous claims is considered a multiple dependent claim.

Article 31 .- The summary shall consist of a synthesis of the technical explanation given in the patent application. That summary shall be used to provide technical information only and shall have no effect whatsoever on the interpretation of the scope of protection conferred by the patent.

Article 32. - No Member Country may require the fulfillment of patent application requirements additional to or other than those set forth in this Decision.

Without prejudice to the foregoing, should the competent national office, during the processing of the application, have any reasonable doubts about any of the elements included, it may request the applicant to provide the necessary substantiating evidence.

Article 33. - The date of its receipt by the competent national office shall be considered the application filing date, providing that the application contained the following elements:  

a) a statement that the applicant is applying for a patent;

b) data identifying the applicant or person filing the application or that shall enable the competent national office to communicate with that person;

c) a description of the invention;

d) the drawings, if pertinent; and,

e) the proof of payment of the prescribed fees.

Failure to comply with any of the requirements specified in this article shall cause the competent national office to reject the application for processing and no filing date shall be assigned to it.

Article 34. - The applicant for a patent may, at time during the processing, request the modification of the application, but that modification may not involve extending the scope of protection beyond the use indicated in the initial application.

The applicant may, likewise, request the correction of any material error.

Article 35. - Patent applicants may, at any time during the processing, request the conversion of their applications for an invention patent into applications for a utility model patent. That change in application shall be possible only if the nature of the invention permits that conversion.

An applicant may submit a petition for conversion of an application one time only. The converted application shall keep the original filing date.

The competent national offices may, at any stage of the processing, suggest that the applicant make a convertion in the patent being applied for and order an additional fee to be paid for filing the application for its conversion.

The applicant may accept or reject the suggestion on the understanding that if it is rejected the application shall continue to be processed as originally filed for.

Article 36. - Applicants may, at any time during the processing, divide their applications into two or more divisional applications, but none of these may have the effect of extending the scope of protection beyond the use indicated in the initial application.

The competent national office may, at any time during the process, ask the applicant to divide the application if it fails to comply with the requirement for the unity of the invention.

Each divisional application shall be entitled to keep the original filing date or, where priority is claimed, the initial date of application.

Where multiple or partial priorities are claimed, the applicant or the competent national office shall state what priority date or dates shall be applicable to the subject matters that each of these divisional applications shall cover.

For the purposes of the division of an application, the applicant shall file the necessary documents to complete each of the resulting applications.

Article 37. - The applicant may, at any moment during the processing, combine two applications into a single one, but this combination may not involve extending the scope of protection beyond the use indicated in the initial application.

No combination shall be permitted if the merged applications fail to comply with the requirement for the unity of the invention stipulated in article 25.

The combined application shall be entitled to keep the original filing date or, where priority is claimed, the initial date or dates of application.

CHAPTER IV
On the Processing of the Application

Article 38. - The competent national office shall examine the application within 30 days following its filing to ascertain whether it meets the conditions of form specified in articles 26 and 27.

Article 39.- If the examination of form reveals that the application does not fulfill the requirements referred to in articles 26 and 27, the competent national office shall request the applicant to complete those requirements within a period of two months following the date of notification. That period may be extended once, upon request, for an equal length of time without loss of priority.

If, on expiration of the specified period, the applicant has failed to comply with the required conditions, the application shall be considered abandoned and shall lose its order of preference. Without prejudice to this, the competent national office shall keep the information contained in the application confidential.

Article 40. - Within eighteen months after the filing date in the Member Country concerned or, where priority is claimed, after the date of application, the file shall assume a public nature and shall be open for consultation. The competent national office shall accordingly order the publication of that application in conformity with pertinent domestic provisions.

The applicant may request the publication of the application at any time after the examination of its form has been concluded, notwithstanding the stipulation of the previous paragraph. In that case, the competent national office shall order its publication.

Article 41 .- A patent application file may not be consulted by third parties until the end of a period of eighteen months computed from its filing date, unless written consent has been obtained from the applicant.

Persons able to prove that the applicant for a patent has sought to assert against them rights deriving from that application may consult the file prior to publication without the consent of the said applicant.

Article 42.- Within a period of 60 days following the date of publication, any person with a legitimate interest may, one time only, submit valid reasons for contesting the patentability of the invention.

The competent national office shall grant once, upon request, a sixty-day extension in which to provide valid reasons for that opposition.

Reckless objections may be sanctioned if so stipulated by domestic law.

Article 43. - If any objections have been lodged, the competent national office shall request that the applicant present its arguments, submit documents, or rewrite the invention claims or description, as they see fit, within sixty days following that notification.

The competent national office shall grant applicants once only, upon request, a sixty-day extension in which to make their defense against the objections that have been presented.

Article 44.- The applicant shall request an examination be made of the patentability of the invention within six months after publication of the application, regardless of whether or not any objections have been filed. Member Countries may charge a fee for making the examination. If that period elapses without these applicant having requested the examination, their applications shall be considered to have been abandoned.

Article 45. - Were the competent national office to ascertain that their inventions are not patentable or fail to comply with any one of the requirements for granting patents stipulated in this Decision, it shall notify the applicants accordingly. These shall respond to that notification within sixty days after the date of notification. This period may be extended one time only for a period of thirty additional days.

The competent national office may notify applicants two or more times, pursuant to the preceding paragraph, should it deem such notifications necessary for its examination of the invention’s patentability.

If those applicants fail to file an answer to the notification within the stipulated period or if, despite their explanations, the impediments to granting the patent continue to exist, the competent national office shall deny those patents.

Article 46.- The competent national office may request reports from experts or from scientific or technological bodies that are considered suitable, to get their opinions on the patentability of the invention. It may also, as it deems fit, request reports from other intellectual property offices.

If the examination of the patentability of the invention requires it, the applicant shall, at the request of the competent national office and within a period of no more than three months, submit one or several of the following documents connected with one or more foreign applications referring to all or part of the invention being examined:

a) a copy of the foreign application;

b) copies of the findings of the examinations of the novelty or patentability of the invention conducted with respect to the foreign application in question;

c) a copy of any patent or other patent protection that may have been granted on the basis of this foreign application;

d) a copy of any order or decision that may have been handed down rejecting or denying the foreign application; or,

e) a copy of any order or decision that may have been handed down annulling or invalidating the patent or other patent protection that was granted on the basis of the foreign application.

The competent national office may accept the results of the examinations referred to under letter b) as sufficient to certify that the conditions for the invention’s patentability have been fulfilled.

If the applicant fails to submit the documents that have been requested within the period stipulated in this article, the competent national office shall deny the patent.

Article 47. - The competent national office may, at the request of the applicant, suspend the processing of the patent application if any one of the documents that are to be submitted pursuant to article 46 b) and c) has not yet been obtained by the applicant or is presently being processed by a foreign authority.

Article 48. - If the findings of the final examination are favorable, the patent shall be granted. If they are partially unfavorable, the patent shall be granted only in respect of those claims that have been accepted. If they are entirely unfavorable, the patent shall be denied.

Article 49.- For organizing and classifying their patents, the Member Countries shall use the International Patent Classification established by the 1971 Strasbourg Agreement Concerning the International Patent Classification, together with its effective amendments.

Continue on to Chapter V


* This Decision shall entry into effect on December 1, 2000