DECISION 486: Common Intellectual
(Non official translation)
THE COMMISSION OF THE ANDEAN COMMUNITY,
Article 27 of the Cartagena Agreement and
Commission Decision 344;
To replace Decision 344 by the following
COMMON INTELLECTUAL PROPERTY REGIME
GENERAL PROVISIONS Index
On National Treatment
- 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
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
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
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
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
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
twelve months for patents on inventions and utility models; and,
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
in the case of patents on inventions
or utility models: sixteen months; and,
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.
- Failure to comply with the
deadlines, present the documents, or pay the fee shall result in the loss of the
On Discontinuance and Abandonment
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
Article 13. - The stipulations of the
previous article shall be applicable to the abandonment of the application
proceeding as pertinent.
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
Article 15. - The following shall not be
discoveries, scientific theories, and
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;
literary and artistic works or any
other aesthetic creation protected by copyright;
plans, rules, and methods for the
pursuit of intellectual activities, playing of games, or economic and business
computer programs and software, as
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:
the inventor or the inventor’s
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,
a third party who obtained the
information directly or indirectly from the inventor or the inventor’s
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
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;
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;
plants, animals, and essentially
biological processes for the production of plants or animals other than
non-biological or microbiological processes;
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
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
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
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.
The inventor shall have the
right to be cited as such in the patent or to oppose being so mentioned.
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.
Applications for patents
shall be filed with the competent national office and shall contain:
one or more claims;
one or more drawings, if needed to
understand the invention which, shall be considered an integral part of the
such powers of attorney as may be
proof of payment of the prescribed
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;
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;
the certificate of deposit of the
biological material, if applicable; and,
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:
the application for a patent grant;
the applicant’s name and address;
the nationality or address of the
applicant and, should the applicant be a judicial person, the place of
the name of the invention;
the name and address of the inventor,
if a person other than the applicant;
the name and address of the
applicant’s legal representative, if pertinent;
the signature of the applicant or of
the applicant’s legal representative; and,
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:
the technological sector to which the
invention refers or in which it shall be applied;
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
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.
a brief description of the drawings
if there are any;
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,
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
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 statement that the applicant is
applying for a patent;
data identifying the applicant or
person filing the application or that shall enable the competent national office
to communicate with that person;
a description of the invention;
the drawings, if pertinent; and,
the proof of payment of the prescribed
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
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
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.
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.
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
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
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
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
The competent national office shall grant once,
upon request, a sixty-day extension in which to provide valid reasons for that
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.
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
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.
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
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 copy of the foreign application;
copies of the findings of the
examinations of the novelty or patentability of the invention conducted with
respect to the foreign application in question;
a copy of any patent or other patent
protection that may have been granted on the basis of this foreign
a copy of any order or decision that
may have been handed down rejecting or denying the foreign application; or,
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
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
shall entry into effect on December 1, 2000