OAS

ANDEAN COMMUNITY

DECISION 486: Common Intellectual Property Regime


(Continuation)

CHAPTER V
On the Rights conferred by Patents

Article 50.- Patents shall have a term of twenty years counted from the filing date of the corresponding application in the Member Country.

Article 51. - The scope of the protection conferred by a patent shall be determined by the wording of the claims. The description and drawings, or the deposit of biological material where applicable, shall be used for the interpretation of the claims.

Article 52. - A patent shall confer on its owner the right to prevent third parties not having the owner’s consent from the acts of:

a) where the subject matter of a patent is a product:

i) making the product;

ii) offering for sale, selling, or using the product; or importing it for these purposes; and,

b) where the subject matter of a patent is a process:

i) using the process; or,

ii) carrying out any of the acts that are specified under paragraph a) above with respect to a product obtained directly by that process.

Article 53. - A patent owner may not exercise the right referred to in the previous article with respect to the following acts:

a) acts carried out in a private circle and for non-commercial purposes;

b) acts carried out exclusively to experiment with the subject matter of the patented invention;

c) acts carried out exclusively for the purposes of teaching or scientific or academic research;

d) the acts referred to in article 5bis of the Paris Convention for the Protection of Industrial Property;

e) where the patent protects biological material that is capable of being reproduced, except for plants, using that material as a basis for obtaining a viable new material, except where the patented material must be used repeatedly to obtain the new material.

Article 54. - A patent shall not confer on its owner the right to proceed against a third party making commercial use of a product protected by a patent once that product has been introduced into the commerce of any country by the owner or another person authorized by the right holder or with economic ties to that patent owner.

For the purposes of the preceding paragraph, two persons shall be considered to have economic ties when one of the persons is able to exercise a decisive influence on the other, either directly or indirectly, with respect to the exploitation of the patent or when a third party is able to exert that influence over both persons.

Where the patent protects biological material that is capable of being reproduced, the patent coverage shall not extend to the biological material that is obtained by means of the reproduction, multiplication, or propagation of the material that was introduced into the commerce as described in the first paragraph, provided that it was necessary to reproduce, multiply, or propagate the material in order to fulfill the purposes for which it was introduced into commerce and that the material so obtained is not used for multiplication or propagation purposes.

Article 55. - Without prejudice to the provisions stipulated in this Decision with respect to patent nullity, the rights conferred by a patent may not be asserted against a third party that, in good faith and before the priority date or the filing date of the application on which the patent was granted, was already using or exploiting the invention, or had already made effective and serious preparations for such use or exploitation.

In such case, the said third party shall have the right to start or continue using or exploiting the invention, but that right may only be assigned or transferred together with the business or company in which that use or exploitation is taking place.

Article 56. - A patent grant or a patent application being processed may be assigned or transferred by succession.

Any patent assignment or transfer shall be registered with the competent national office. Failure to register shall render the assignment or transfer invalid with respect to third parties.

Patent assignments or transfers, in order be registered, shall be in writing.

Any interested party may file for registration of a patent assignment or transfer.

Article 57. - The owner of a patent or of a patent application that is being processed may license one or more third parties to exploit the invention it covers.

Any license that is granted for the exploitation of a patent shall be registered with the competent national office. Failure to register shall render the license invalid with respect to third parties.

Licenses, in order to be registered, shall be in writing.

Any interested party may file for registration of a license.

The registered patent owner shall inform the competent national office about any change in the name or address of the right holder during the term of the license contract. Otherwise, any notification that may be made on the basis of the data entered in the registry shall be considered valid.

Article 58.- The competent national authority shall not register any license agreements for patent exploitation that do not conform to the provisions of the Common Regime for the Treatment of Foreign Capital and for Trademarks, Patents, Licenses, and Royalties, or that do not conform to Andean Community or domestic antitrust provisions.

CHAPTER VI
On the Obligations of the Patent Owner

Article 59. - Owners of patents shall be under the obligation to exploit their patented inventions in any Member Country, either directly or through a person they authorize to do so.

Article 60 .- For the purposes of this Chapter, exploitation shall be understood to mean the industrial manufacture of the patented product or the full use of the patented process, including the distribution and marketing of the results thereof on a scale sufficient to satisfy the demands of the market. Exploitation shall also be understood to mean the importation of the patented product, including its distribution and marketing, where this is done on a scale sufficient to satisfy the demands of the market. Where the patent refers to a process that does not result in a product, the requirements for marketing and distribution shall not be enforced.

CHAPTER VII
On the Regime of Compulsory Licensing

Article 61. - At the expiry of a period of three years following a patent grant or of four years following the application for a patent, whichever is longer, the competent national office may grant a compulsory license mainly for the industrial manufacture of the product covered by the patent, or for full use of the patented process, at the request of any interested party, but only if, at the time of the request, the patent had not been exploited in the manner specified in articles 59 and 60, in the Member Country in which the license is sought, or if the exploitation of the invention had been suspended for more than one year.

Compulsory licenses shall not be granted if patent owners are able to give valid reasons for their failure to act, which may be reasons of force majeure or an act of God, in accordance with the domestic provisions in effect in each Member Country.

A compulsory license shall be granted only if, prior to applying for it, the proposed user has made efforts to obtain a contractual license from the patent holder on reasonable commercial terms and conditions and that such efforts were not successful within a reasonable period of time.

Article 62. - Decisions to grant a compulsory license, as stipulated in the previous article, shall be taken after the patent owners have been notified to present their arguments as they see fit within the following sixty days.

The competent national office shall specify the scope or coverage of the license, and in particular shall specify the period for which it is granted, the subject matter of the license, the amount of the remuneration, and the conditions for the payment thereof. The remuneration shall be set at an adequate level in accordance with the individual circumstances of each case and, in particular, the economic value of the authorization.

Opposition to a compulsory license shall not prevent its exploitation or have any effect on any periods that may be running. The filing of an objection shall not prevent the patent owner, in the meantime, from collecting the remuneration specified by the competent national office on the part unaffected by the objection.

Article 63. - At the request of the owner of the patent or the licensee, the conditions governing the compulsory license may be changed by the competent national office where new circumstances so dictate and, in particular, when the patent holder grants another license on terms that are more favorable than the existing ones.

Article 64.- The licensee shall exploit the licensed invention within a period of two years following the date the license was granted, unless that licensee is able to give valid reasons for inaction consisting of force majeure or an act of God. Otherwise, at the patent owner’s request, the competent national office shall revoke the compulsory license.

Article 65. - Following the declaration by a Member Country of the existence of public interest, an emergency, or national security considerations, and only for so long as those considerations exist, the patent may be subject to compulsory licensing at any time. In that case, the competent national office shall grant the licenses that are applied for. The owner of the patent so licensed shall be notified as soon as is reasonably possible.

The competent national office shall specify the scope or extent of the compulsory license and, in particular, the term for which it is granted, the subject matter of the license, and the amount of remuneration and the conditions for its payment.

The grant of a compulsory license for reasons of public interest shall not reduce the right of the patent owner to continue exploiting it.

Article 66. - The competent national office may, either ex officio or at the request of a party, and after having obtained the consent of the national antitrust authority, grant compulsory licenses where practices are noted that are detrimental to the exercise of free competition, especially where they constitute an abuse by the patent owner of a dominant position in the market.

The need to correct anti-competitive practices shall be taken into account in determining the amount of remuneration to be paid in such cases.

The competent national office shall refuse termination of a compulsory license if and when the conditions which led to the granting of the license are likely to recur.

Article 67 .- The competent national office shall grant a license, upon request by the owner of a patent whose exploitation necessarily requires the use of another patent, and that right holder has been unable to secure a contractual license to the other patent on reasonable commercial terms. That license shall, without prejudice to the provisions of article 68, be subject to the following conditions:

a) the invention claimed in the second patent shall involve an important technical advance of considerable economic significance in relation to the invention claimed in the first patent;

b) the owner of the first patent shall be entitled to a cross-license on reasonable terms to use the invention claimed in the second patent; and,

c) the license authorized in respect of the first patent shall be non-assignable except with the assignment of the second patent.

Article 68. - In addition to the conditions provided for in the preceding articles, compulsory licenses shall be subject to the following:

a) they shall be non-exclusive and may not be sublicensed;

b) they shall be non-assignable, except with the part of the business or goodwill which permits its industrial use. This shall be evidenced in writing and registered with the competent national office. Otherwise, those assignments or transfers shall not be legally binding;

c) they shall be liable, subject to adequate protection of the legitimate interests of the persons so authorized, to be terminated if and when the circumstances which led to them cease to exist and are unlikely to recur;

d) their scope and duration shall be limited to the purposes for which they were authorized;

e) in the case of patents protecting semi-conductor technology, a compulsory license shall be authorized only for public non-commercial use or to remedy a practice declared by the competent national authority to be anti-competitive in accordance with articles 65 and 66;

f) they provide for payment of adequate remuneration according to the circumstances of each case, taking into account the economic value of the license, without prejudice to the stipulations of article 66; and,

g) they shall be used predominantly for the supply of the domestic market.

Article 69. - Compulsory licenses that fail to comply with the provisions of this Chapter shall be devoid of any legal effect whatsoever.

CHAPTER VIII
On Acts Subsequent to the Grant

Article 70.- A patent owner may request the competent national office to modify the patent in order to enter any change in the name, address, residence or other information about the rights holder or the inventor or to amend or limit the scope of one or more of the claims. The owner of the patent may, likewise, request that any material error in the patent be rectified.

The provisions in respect of the modification or correction of an application shall be applicable as pertinent.

Article 71. - The owner of a patent may, through a declaration addressed to the competent national office, withdraw one or more patent claims or a claim to the patent as a whole. That withdrawal shall become effective as of the date the respective declaration is received.

Article 72.- The owner of a patent may divide it into two or more fractional patents. The provisions regarding the division of an application shall be applicable to that of patents, in all pertinent matters.

Article 73. - A patent owner may also combine two or more patents. The provisions regarding the combination of applications shall be applicable to these patents, in all pertinent matters.

Article 74 .- The competent national office may establish the fees on acts carried out after the patent grant.

CHAPTER IX
On the Invalidation of the Patent

Article 75. - The competent national authority may, either ex officio or at the request of a party, and at any time, declare a patent null and void, where:

a) the subject matter of the patent is not an invention according to the requirements stipulated in article 15;

b) the invention fails to comply with the requirements for patentability set out in article 14;

c) the patent was granted for an invention covered by article 20;

d) the patent fails to disclose the invention, as required by article 28 and, if pertinent, article 29;

e) the claims included in the patent are not fully substantiated by the description provided;

f) use of the patent granted has been broader than was indicated in the original application and requires having to extend its scope of protection;

g) when pertinent, the products or processes in respect of which the patent is being filed have been obtained and developed on the basis of genetic resources or their byproducts originating in one of the Member Countries, if the applicant failed to submit a copy of the contract for access to that genetic material;

h) when pertinent, the products or processes whose protection is being requested have been obtained or developed on the basis of traditional knowledge belonging to indigenous, African American, or local communities in the Member Countries, if the applicant has failed to submit a copy of the document certifying the existence of a license or authorization for use of that knowledge originating in any one of the Member Countries; or,

i) there are grounds for absolute invalidation according to domestic legislation covering administrative acts.

Where the grounds specified above are applicable only to some of the claims or some parts of a claim, invalidation shall be pronounced only in respect of those claims or those parts of the said claim, as the case may be.

The patent, claim, or part of a claim that has been invalidated shall be deemed null and void as from the filing date of the patent application.

Article 76. - Where defects in administrative acts fail to produce absolute invalidation as specified in the preceding article, those acts shall be relatively invalidated. In such cases, the competent national authority shall, in conformity with domestic legislation, declare them null and void within a period of five years counted from the patent grant date.

Article 77. - The competent national authority may, where a patent has been granted to a person who has no right to it, annul that patent. Invalidation proceedings may be initiated only by the person who has a right to obtain that patent. That right of action shall lapse five years after the patent grant date or two years following the date on which the person to whom that right belongs learned about the use of the invention, whichever period expires first.

Article 78 .- In invalidation proceedings, the competent national authority shall request the patent owners to present arguments and submit the proof they deem advisable.

Where that authority under the domestic law of a Member Country is the competent national office, the patent owner shall present the arguments and submit the proof referred to in the previous article within a period of two months after being notified thereof.

Before the expiry of the period stipulated in the previous article, the interested party may request an extension of two additional months.

Once the periods stipulated in this article have expired, the competent national office shall rule on the patent’s invalidation and inform the parties of its decision.

Article 79. - The competent national authority may, where necessary to rule on the invalidation of a patent, request the patent owner to submit one or more of the documents referred to in article 46 with regard to the patent that is the subject matter of the proceeding.

CHAPTER X
On the Lapsing of the Patent

Article 80. - Annual fees prescribed by the competent national offices shall be paid in advance in order to keep a patent in force or to maintain a pending patent application, as the case may be.

The deadline for payment of each annual fee shall be the last day of the month of presentation of the invoice. Two or more annual fees may be paid in advance.

Annual fees shall be paid within a grace period of six months after the starting date of the corresponding annual period, together with the prescribed surcharge. The patent or pending application shall remain in full force during the grace period.

Failure to pay an annual fee as stipulated in this article shall result in the legal lapsing of the patent or the patent application.

TITLE III
ON UTILITY MODELS
Index

Article 81 .- Any new shape, configuration, or arrangement of components of any device, tool, implement, mechanism or other object, or any part thereof, that permits improved or different operation, use, or manufacture of the object incorporating it, or that endows it with any utility, advantage, or technical effect that it did not have previously shall be considered a utility model.

Utility models shall be protected by patents.

Article 82 .- The following shall not be considered utility models: sculptures, architectural works, or objects that are purely aesthetic in nature.

Processes and materials excluded from patent protection may not be the subject matter of utility model patents.

Article 83 .- An applicant for a utility model patent may request its conversion into an invention patent or registration of an industrial model, provided that the subject matter of the original application so permits. In the latter case, it shall be necessary to fulfill the requirements stipulated in article 35.

Article 84 .- The duration of the utility model shall be ten years, as of the application filing date in the Member Country concerned.

Article 85. - The provisions of this Decision in respect of invention patents shall be applicable to utility model patents, as pertinent. The only exceptions are the processing periods, which shall be reduced to one-half their length. Without prejudice to the foregoing, the period stipulated in article 40 shall be shortened to twelve months.

TITLE IV
ON THE LAYOUT-DESIGNS (TOPOGRAPHIES) OF INTEGRATED CIRCUITS
Index

CHAPTER I
Definitions

Article 86. - The following definitions shall apply for purposes of this Title:

a) integrated circuit: a product, in final or intermediate form, of which at least one element is an active element and some or all of whose interconnections are an integral part of the body or surface of a piece of material that is intended to be used electronically;

b) layout-design: the three-dimensional arrangement of the elements, regardless of form, of which at least one is an active element, and their interconnection into an integrated circuit, as well as that three-dimensional arrangement prepared for use in an integrated circuit to be manufactured.

CHAPTER II
On the Requirements for Protection of Layout-Designs of Integrated Circuits

Article 87. - A layout-design shall be protected if it is an original design.

A lay-out design shall be considered original when it is the result of its creator’s intellectual efforts and is not in common use in the integrated circuit industry.

Where composed of two or more elements in common use in the integrated circuit industry, a layout-design shall be considered original only if the combination of those elements, as an assembly, meets this requirement.

CHAPTER III
On the Right Holders

Article 88. - The right to register a layout-design of an integrated circuit belongs to its designer. That right may be assigned or transferred by succession.

If two or more persons jointly prepare a layout-design, those persons shall share the right to protect it.

The right to protection of a layout-design created under a project or service contract entered into for this purpose or within the framework of an employment relationship in wich the designer has such function, shall correspond to the person who contracted for the project or service, or the employer, unless otherwise stipulated under a contract.

CHAPTER IV
On the Application for Registration

Article 89. - The application to register a layout-design of an integrated circuit shall be filed with the competent national office and shall contain the following information:

a) the petition;

b) a copy or drawing of the layout-design and, if commercially exploited, a sample of that integrated circuit;

c) if pertinent, a statement of the date of first commercial exploitation of the integrated circuit anywhere in the world;

d) if pertinent, the statement of the year the integration circuit was created;

e) a description of the electronic operation to be performed by the integrated circuit in the layout-design;

f) copies of any applications for registration or other protection filed for or obtained abroad by the applicants or their assignees, referring to all or part of the layout-design for which a registration application is being filed in the Member Country;

g) such powers of attorney as may be needed; and,

h) a proof of payment of the prescribed fee.

Article 90. - The petition to register an application for a layout-design of an integrated circuit shall be a form and shall include the following information:

a) the request for the registration;

b) the name and address of the applicant;

c) the nationality or address of the applicant and, if the applicant is a juridical person, the site of incorporation;

d) the name and address of the creator of the layout-design, if a person other than the applicant;

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

f) the date, number, and office where any other application for registration or other protection was filed or obtained abroad by the applicant or assignee in respect of all or part of the same layout design being applied for in the Member Country, if pertinent; and,

g) the signature of the applicant or the applicant’s legal representative.


Article 91.- Where the layout-design for which a registration application has been filed includes an industrial secret, the applicant shall file, in addition to the graphic representation required, a representation of the layout omitting, erasing, or distorting the parts containing that secret. It is necessary for the remaining parts to be sufficient to allow for identification of the layout-design.

Article 92. - The date of reception of an application by the competent national office shall be considered its filing date, provided that the application contained at least the following elements:

a) an express or implicit statement that the application is being filed for the registration of a layout-design;

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

c) a graphic representation of the layout-design for which registration is being applied for; and

d) the proof of payment of the prescribed fees.

Failure to comply with any one of the requirements specified in this article shall result in refusal by the competent national to process the application and no filing date shall be assigned to it.

CHAPTER V
On the Processing of the Application

Article 93. - The competent national office shall examine whether the subject matter of the application constitutes a layout-design as defined in article 86 and whether the application contains the information requested in articles 89, 90, and 91. The competent national office shall not examine the originality of the layout-design ex officio, unless reasoned opposition to the application has been presented.

Should any omission or defect be noted, the applicant shall be admonished to make the necessary correction within a period of three months, and that failure to do so shall be considered abandonement and shall be placed in the archives ex officio. If the applicant does not make the correction within the allotted period, the competent national office shall make that warning effective through a reasoned decision.

Article 94 .- Having examined the application, the competent national office shall order its announcement through the publication in the official government gazette of a notice to be paid by the interested party.

The pertinent provisions in respect of applications for investment patents shall be applicable to the publication of the notice.

Article 95. - Any interested person may lodge a substantiated objection with the competent national office, including information and documents that would be useful for ascertaining the registerability of a layout-design.

Pertinent provisions in respect of applications for invention patents shall be applicable to the objections.

Article 96. - If the stipulated requirements are fulfilled, the competent national office shall register the layout design and issue a registration certificate containing the data included in the corresponding registry.

CHAPTER VI
On the Rights conferred by Registration

Article 97. - If the layout-design has been exploited commercially anywhere in the world, the application for registration shall be filed with the competent national office of the Member Country concerned within a period of two years from its first commercial exploitation. If the application is filed after the expiration of that period, the registration shall be denied.

A layout-design not having been commercially exploited anywhere in the world may be registered only if applied for to a competent national office of a Member Country no later than 15 years after the last day of the year the layout was created. If the application is filed after that period has expired, its registration shall be denied.

Article 98. - Exclusive rights over a registered layout-design shall have a duration of ten years from the oldest of the following dates:

a) the last day of the year the layout-design was first commercially exploited anywhere in the world, or

b) the filing date of an application for registration with the competent national office of the Member Country concerned.

The term of protection of a registered layout-design shall lapse in any case at the conclusion of a period of 15 years counted from the last day of the year in which the layout-design was created.

Article 99. - The protection shall be applied irrespective of whether the integrated circuit in which the protected layout-design has been incorporated has been manufactured and irrespective of whether the layout-design has been incorporated into an integrated circuit.

Registration of a layout-design of an integrated circuit confers on its holder the right to impede third persons from performing any of the following acts:

a) reproducing, through incorporation into an integrated circuit or in any other way, all or part of the protected layout-design that complies with the requirements for originality stipulated in article 87;

b) marketing, importing, offering for sale, selling, or otherwise distributing a protected layout-design or an integrated circuit in which a protected layout-design is incorporated; or

c) marketing, importing, offering for sale, selling, or otherwise distributing an article incorporating such a protected integrated circuit, only insofar as it continues to contain an unlawfully reproduced layout-design.

Protection conferred by registration shall cover only the layout-design itself, and shall not extend to any idea, process, system, technique, or data encoded or incorporated into the layout-design.

Article 100. - The right conferred by registration of the layout-design only may be asserted against acts having industrial or commercial purposes. Registration shall not confer the right to impede the following acts:

a) acts carried out in a private circle and for non-commercial purposes;

b) acts carried out exclusively for purposes of evaluation, analysis, or experimentation;

c) acts carried out exclusively for purposes of teaching or scientific or academic research;

d) acts referred to in article 5 of the Paris Convention for the Protection of Industrial Property.

Article 101. - Registration of a layout-design shall not give the holder the right to prevent third parties from engaging in acts of commerce in respect of registered layout-designs, integrated circuits in which a protected layout-design is incorporated, or articles containing those integrated circuits after the introduction of the layout-design into the commerce of any country by the right holder or by any other person with the consent of or having economic ties to that right holder.

For purposes of the preceding paragraph, two persons shall be considered to have economic ties when one of the persons is able to exercise a decisive influence over the other, either directly or indirectly, with respect to exploitation of the layout-design, or when a third party is able to exert that influence over both persons.

Article 102. - The right holder to a registered layout-design may not prevent a third party from engaging in acts of industrial or commercial exploitation in respect of a layout-design created by another person through the evaluation or analysis of the protected layout-design, where the layout-design thereby created fulfills the requirements for originality stipulated in Article 87. Nor may that right holder prevent those acts in respect of integrated circuits in which the layout-designs so created are incorporated or of articles incorporating those integrated circuits.

Article 103 .- The right holder of a registered layout-design may not prevent a third party from carrying out the acts cited in article 99 with respect to another layout-design originally created by a third party, even if identical.

Article 104 .- Performance of any of the acts referred to in article 99 in respect of an integrated circuit incorporating an unlawfully reproduced layout-design or any article incorporating such an integrated circuit shall not be considered an infringement of rights to a registered design, where the person performing or ordering such acts did not know and had no reasonable ground to know, when acquiring the integrated circuit or article incorporating such an integrated circuit, that it incorporated an unlawfully reproduced layout-design. After the time that such person has received sufficient notice that the layout-design was unlawfully produced, that person may continue to perform any of the acts with respect to the stock on hand or ordered before such time, but shall be liable to pay the right holder a sum equivalent to a reasonable royalty such as would be payable under a freely negotiated license in respect of such layout-design.

Article 105. - A layout-design registration that has been granted or is being processed may be assigned or transferred by succession.

Any assignment or transfer of a layout-design registration shall be filed with the competent national office. Failure to register that assignment or transfer shall render it legally invalid in respect of third parties.

Assignments or transfers, in order to be registered, shall be in writing.

Any interested person may apply for registration of an assignment or transfer.

Continue on to Chapter VII