header_logo
cancel1

Puerto Rico

Published on Wednesday 1st June 2016

    • Puerto Rico

      Novelty is a requirement for patentability. As in any other United States jurisdiction, US Patent Law applies in Puerto Rico. In the US, the novelty requirement is set forth in 35 USC section 102. Novelty may be lost due to acts by the inventor or by a third party. US law grants an inventor a one-year grace period during which a patent may be pursued, even if the invention is disclosed to the public. If the inventor does not file for a patent during this grace period, novelty (and thus, patentability) is lost. If a prior art (ie, issued patent, patent application or publicly available disclosure) discloses all the elements of the invention, the inventor is barred from obtaining a patent because the invention lacks novelty.

      Last verified on Friday 3rd March 2017

    • Puerto Rico

      Obviousness must be determined from the perspective of a person of ordinary skill in the art at the time the invention was made. An invention is obvious when the differences between the alleged invention and the prior art are such that the subject matter as a whole would have been obvious to a person of ordinary skill in the art at the time the invention was made.

      Last verified on Friday 3rd March 2017

    • Puerto Rico

      In the United States, there are three types of patents that may be obtained. First, a utility patent protects the functionality of an invention. This type of patent may be obtained for a process, a machine, an article of manufacture, a composition of matter or for an improvement of any of these. A design patent protects how an article looks; it does not protect its functionality. In order to obtain a utility patent, the design must be new and non-functional. Lastly, plant patents may be issued for asexually reproduced plants that are novel and non-obvious. Sexually reproducible plants may be eligible for utility patent protection.

      Last verified on Friday 3rd March 2017

    • Puerto Rico

      In the United States (and, hence, Puerto Rico) the protection granted to a patent (subject to the payment of the corresponding fees), lasts for:

      • 20 years in the case of "utility patents", beginning on the date on which the patent is issued and ending 20 years from the date on which the application for the patent was filed in the United States or, if the application contains a specific reference to an earlier filed application, from the date on which the earliest such application was filed (see 35 USC section 154(a)(2)); or
      • 14 years in the case of "design patents", beginning on the date it was granted (see 35 USCA. section 173).

      Last verified on Friday 3rd March 2017

    • Puerto Rico

      The United States currently has a "first to file" system (effective 16 March 2013). Under the current system, whoever files the application first has a prima facie claim to the patent; however, if a later applicant is able to demonstrate an earlier date of conception and was diligent in reducing to practice the invention, then the "date of invention" is the date of conception. In that case, even if an applicant is not the first in time, he or she may be entitled to a patent if these conditions are met.

      Patent law is territorial in nature. That is, courts in the United States have no jurisdiction to enforce or to invalidate a patent granted elsewhere, regardless of the origin of the invention. On the other hand, if an invention was conceived in the United States, the original patent application must be filed in this country, unless a licence is obtained.

      Last verified on Friday 3rd March 2017

    • Puerto Rico

      Before an inventor can file a patent application in a foreign country for an invention created in the United States, the inventor must obtain a foreign filing licence. This licence must be obtained within six months of the national (ie, US) filing date.

      Last verified on Friday 3rd March 2017

    • Puerto Rico

      Yes. Any new and non-obvious business method that produces a useful, concrete and tangible result is eligible for patent protection. In light of the Supreme Court’s decision in Bilski v Kappos, a "business method" patent is not necessarily invalid if it is not tied to a machine and does not physically transform a product. The "machine or transformation" test is still useful in determining patentability, but is not the only criteria. Abstract ideas, however, are not patentable even if these are claimed as a ‘process.’ In 2014, a decision, Alice Corp. v CLS Bank International, was made by the Supreme Court to further clarify that abstract ideas could not be patented by merely implementing them with a generic computer system that performs generic computer functions.

      Last verified on Friday 3rd March 2017

    • Puerto Rico

      Historically, patent litigation has been scarce in Puerto Rico. However, since January 2013 patent litigation on the island has significantly increased with 47 new complaints filed in the United States District Court for the District of Puerto Rico. The major areas of litigation include the telecommunications and information technology industries.

      Last verified on Friday 3rd March 2017

    • Puerto Rico

      Both monetary and injunctive relief are available. A court may issue an injunction ordering the infringer to refrain from using, selling or offering the invention. Injunctions are typically accompanied by an award of monetary damages to the plaintiff. The Patent Act provides only one category of patent damages: those ‘adequate to compensate for the infringement.’ However, the statute sets a floor for what constitutes adequate damages: ‘no...less than a reasonable royalty’. The Patent Act also requires courts, as a part of the damages award, to fix interest and costs against the infringer. Moreover, for cases of wilful infringement damages can be increased up to three times the amount found by the jury or assessed by the court.

      In addition to reasonable royalties, courts have created another form of monetary remedy that may adequately compensate the patent holder; namely, profits lost due to infringement. Damages awarded as lost profits frequently exceed the amount of a reasonable royalty. A split between lost profits and reasonable royalty is also permissible in certain circumstances. Awards based on profits made by the infringer are not permissible damages under the Patent Act.

      Last verified on Friday 3rd March 2017

    • Puerto Rico

      On 16 September 2011, President Barack Obama signed the Leahy-Smith America Invents Act (AIA) into law. The most significant aspect of the AIA is that it switched the current patent system from a "first to invent" to a "first to file" system, thus adopting a bright-line approach regarding priority and inventorship.

      The AIA also does away with interference proceedings and implements new post-grant proceedings for challenging the validity of issued patents. These extrajudicial proceedings are: post-grant review, inter partes review, and covered business method review. When compared to litigation, these proceedings provide a lower burden of proving a patent’s invalidity. Whereas proving invalidity in a federal district court requires "clear and convincing evidence", proving invalidity in these proceedings only requires a showing of invalidity by a "preponderance of the evidence". Another advantage of these proceedings is that decisions are made by a panel of three administrative patent judges instead of a single district judge that may have little expertise in the patented technology. For these reasons, inter alia, the popularity of these proceedings has increased exponentially amongst accused patent infringers.

      Last verified on Friday 3rd March 2017

    • Puerto Rico

      Yes. In the United States, the "patent exhaustion" doctrine provides that an initial, authorised sale of an item that embodies a patented product or process terminates all patent rights to that item. In other words, once a patented item has been sold, the item is carried outside the monopoly of patent law and the vendor cannot impose restrictions on that item. However, in its 2013 decision of Bowman v Monsanto Co, the Supreme Court affirmed that the doctrine does not apply to patented self-replicating seeds. Although the decision was specifically limited to seeds, it may assist in excluding other self-replicating technologies from the "patent exhaustion" doctrine.

      Last verified on Friday 3rd March 2017

    • Puerto Rico

      International intellectual property agreements are not applicable on a state level, and for those purposes, Puerto Rico is considered a state. However, through the United States Federal System, the Madrid Protocol does apply to Puerto Rico, as it went into effect in the United States on 2 November 2003. The United States has been a signatory to the TRIPs agreement since 1 January 1995.

      Last verified on Friday 3rd March 2017

    • Puerto Rico

      In Puerto Rico, unlike copyrights and patents, trademark protection is not pre-empted by federal law. Hence, a trademark owner can register and protect its right under both the Federal Trademark Act of 1946, also known as the Lanham Act (Lanham Act) and under the Puerto Rico Trademark Act of 16 December 2009 (Puerto Rico Trademark Act).

      Trademark rights can last indefinitely as long as the owner continues to use the mark to identify its goods or services. However, the registration of the trademark per se does have its limitations. Specifically, federal registrations issued or renewed on or after 16 November 1989, whether on the Principal Register or on the Supplemental Register, remain in force for 10 years from their date of issue or the date of renewal, and may be further renewed for periods of 10 years, unless previously cancelled or surrendered (37 CFR 2.181).

      The registrant must file a renewal application within one year before the expiration date of the registration, or within the six-month grace period after the expiration date of the registration. If no renewal application is filed within this period, the registration will expire (37 CFR 2.182).

      In addition, for a federal trademark registration and a Puerto Rico registration to remain valid, it is also required to file an affidavit or declaration of continued use or excusable non-use within certain periods established by regulation. If this affidavit is not filed in time, the registration will be cancelled. Declarations of use must be filed between the fifth and sixth year following registration, and within the year before the end of every 10-year period after the date of registration. The registrant may file the affidavit within a grace period of six months after the end of the sixth or every tenth year, with payment of a surcharge (37 CFR 2.160).

      Similarly, under the Puerto Rico Trademark Act any mark registration shall remain in effect for 10 years as of the date of registration. The mark registration may be renewed from time to time for the same period of duration, by petition of the principal registrant or his or her legal representatives or assignees as registered in the Department of State, and paying the corresponding fees as established through regulations by the secretary. Said petition shall be made at any time within the year preceding the date of expiration of the 10-year term for which the mark registration was issued or renewed. However, after the abovementioned 10-year period has elapsed, the principal registrant may submit an application for renewal within a six-month period as of the expiration of such term, by paying additional fees as provided by the secretary and as specified in the regulation (10 LPRA section 223p).

      Last verified on Friday 3rd March 2017

    • Puerto Rico

      Under the Puerto Rico Trademark Act, markings or symbols to identify a mark are not required. Notwithstanding, if the trademark owner wishes to identify its mark as registered in Puerto Rico, he or she may do so using the letters ‘MR’ which is the Spanish acronym for registered mark. The registered trademark symbol, ®, may only be used if the trademark is registered in the United States Patent and Trademark Office. The unregistered trademark symbol, ™, may be used for any unregistered trademark (SM in case of a service mark).

      Last verified on Friday 3rd March 2017

    • Puerto Rico

      Prior to 2009, the existing Puerto Rico trademark law provided weak remedies for trademark owners. Under the new Puerto Rico Trademark Act, a certificate of registration provides the trademark owner with a presumption of validity and courts are obliged to issue a provisional cease and desist order, under penalty of contempt, for using a mark that is a copy, imitation, or adoption of the registered trademark in a way that would create a probability of confusion. Within 10 days of said provisional order, the defendant must show cause of why the order should not continue in effect and a preliminary injunction be issued. Further, the current act provides for statutory damages of up to US$150,000 or triple damages for intentional acts. Finally, the Puerto Rico Trademark Act provides remedies for the dilution of famous marks.

      In addition, until recently, Puerto Rico’s registry was not up to date in modern technology. Since 2013, the Puerto Rico Trademark Office (PRTO) allows electronic filing, implemented an efficient searchable trademark database, and an investigation infrastructure capable of examining applications expeditiously.

      Last verified on Friday 3rd March 2017

    • Puerto Rico

      No. A licence to use a mark does not have to be recorded within the Puerto Rico Trademark Office. The only requirement is that the licencing contract must represent a valid agreement between the parties.

      Last verified on Friday 3rd March 2017

    • Puerto Rico

      Generally, trademark holders register their federally registered marks with the US customs service to prevent the entry of counterfeit products into Puerto Rico. In addition, the local Puerto Rico Trademark Act, as well as the Lanham Act, provide remedies for counterfeiting.

      Last verified on Friday 3rd March 2017

    • Puerto Rico

      Yes. If a person or entity uses a valid trademark illegally through any means, which include the use of an infringing domain name or the use of a mark without authorisation in a website, that person or entity shall be liable under the Puerto Rico Trademark Act for trademark infringement.

      Last verified on Friday 3rd March 2017

    • Puerto Rico

      Domain names can be considered trademarks if they are used as a trademark and not an internet address only. This applies both under the Lanham Act and the Puerto Rico Trademark Act. As such, it is recommended that any person or entity aiming to do business in Puerto Rico under a particular domain name that is used as a mark, should also register the domain name for that mark.

      Last verified on Friday 3rd March 2017

    • Puerto Rico

      Because Puerto Rico is currently a territory of the United States, federal trademark laws and judicial precedents are equally applicable to trademarks in our jurisdiction. As such, any foreign business that wishes to do business in Puerto Rico must consider both bodies of laws before making any determination with regards to trademark rights. For example, trademark ownership in Puerto Rico can be acquired both in the federal system of the United States and in Puerto Rico. However, the latter has several advantages, including:

      • statutory damages for trademark infringement;
      • exclusive use of all registered marks within the Puerto Rico jurisdiction;
      • the Certificate of Registration constitutes prima facie evidence of the validity of the registered mark, the ownership of the person on record and of the exclusive right to use the mark;
      • the Certificate of Registration allows the registrant to request an injunction against the unauthorised use of the mark by a third party, without the need of posting bail;
      • local law provides clear guidelines for the computation of damages when the owner’s rights over a registered mark are infringed;
      • local law provides for costs and attorneys’ fees for prevailing plaintiffs in a trademark infringement case;
      • the registered mark will appear in mark searches made by third parties; and
      • the Puerto Rico Trademark Office receives the deposit of Federal Certificates of Registration so as to give publicity and protection in Puerto Rico to all federally registered trademarks.

      Last verified on Friday 3rd March 2017

    • Puerto Rico

      There are two key legal issues to be considered when registering a mark in Puerto Rico. First, the mark must not be confusingly similar to another mark already being used in commerce and second, the mark must not be descriptive of the products and services it represents. To determine these initial thresholds, the examining officer of the Puerto Rico Trademark Office will conduct an initial examination (Regulation for the Procedures in the Registration of Marks in the Department of State of Puerto Rico; Regulation No. 8075, approved 19 September 2011, Rule 35, pages 36-37; Rule 45, page 70). This initial examination is a comprehensive examination of conflicting marks that may exist with the mark for which registration is being requested. The examining officer will evaluate the written application, in conjunction with the drawings, specimens, and any other applicable documents in order to determine if there are any justifications that would render the mark ineligible for the type of registration requested or if an amendment or correction to the mark or its application will be required for the registration to proceed (Regulation, Rule 25, page 36).

      Last verified on Friday 3rd March 2017

    • Puerto Rico

      No. A multi-class trademark application may not be filed in Puerto Rico. Each class application must individually comply with all application requirements, including all applicable fees.

      Last verified on Friday 3rd March 2017

    • Puerto Rico

      A third party may oppose registration or seek cancellation of a mark. Any person who believes that he or she will be aggrieved or damaged by the registration of the mark can oppose the registration by presenting a written opposition statement, which must include all of the reasons why the registration of the mark is being opposed and be signed under penalty of perjury by the person presenting it. The written opposition statement must be filed in the Puerto Rico Trademark Office within 30 days following the publication of an edict containing the mark. Notwithstanding the foregoing, the opponent may, before expiration of the term and for just cause, request an extension of up to 20 days to file the written opposition (Puerto Rico Trademark Act, article 8, page7; Regulation, Rule 42, pages 52-53).

      The written opposition statement must succinctly express the reasons for the allegations justifying opposition to the registration of the mark in question. The written opposition must be accompanied by supporting documents and it must not exceed 15 pages (8.5 x 11in, double-spaced and 12-point font). This page limit does not extend to exhibits or supporting documents (Regulation, Rule 42, pages 53-54).

      The person opposing the registration of a mark must notify the applicant of his written opposition statement no later than two days after the presentation of the same in the Puerto Rico Trademark Office (Regulation, Rule 42, page 54).

      Once notified of the opposition, the applicant shall have 30 days, from the date the notification was sent, to formally respond to the opposition (Regulation, Rule 42, page 55). Additional opportunities to reply are provided (Regulation, Rule 42, page 59).

      Last verified on Friday 3rd March 2017

    • Puerto Rico

      The United States Customs and Border Protection is the administrative agency responsible for restricting importation of counterfeit goods. This protection is available for trademarks registered at the USPTO, copyrights registered at the Library of Congress, and for United States Patents in a limited fashion. To benefit from this protection, the owner of a trademark or copyright has to follow a recordation process on the U.S. Customs and Border Protection.

      Last verified on Friday 3rd March 2017

    • Puerto Rico

      Quality control of the licensed products is a key issue to be considered when licensing trademarks. If quality control is not exercised, the licence agreement may be deemed a naked licence and the trademark may be deemed abandoned. Clearly defining the scope of the authorised use is also important. This includes defining whether the licence is exclusive or non-exclusive, whether the licence is limited to a particular geographic location, and whether the licensee has the right to sub-license to another party. 

      Last verified on Friday 3rd March 2017

    • Puerto Rico

      No, the Puerto Rico Trademark Act does not provide a limit on the scope of licensee indemnification. The licensee must have the written authorization of the owner of the trademark in order to file a complaint under the provisions of the Act.

      Last verified on Friday 3rd March 2017

    • Puerto Rico

      A trademark licence is not deemed a franchise arrangement. A franchise arrangement must expressly state the terms and conditions of the franchise and a trademark licence will not be deemed a franchise arrangement unless the agreement expressly states that the licence is given as part of said arrangement.

      Last verified on Friday 3rd March 2017

    • Puerto Rico

      The Puerto Rico Trademark Act states that a trademark is deemed “abandoned” when it has not been used for three consecutive years or when the owner or holder of the trademark has engaged in conduct that caused the mark to become generic or to lose its distinctiveness. These circumstances create a refutable presumption of abandonment. 

      Last verified on Friday 3rd March 2017

    • Puerto Rico

      Even though registration is not a requirement for protection, the Copyright Act of 1976, as amended, provides several advantages to encourage copyright owners to register their works and is therefore recommended. One such advantage is the ability to claim statutory damages without the need to prove actual damages.

      Last verified on Friday 3rd March 2017

    • Puerto Rico

      In the United States, and hence, in Puerto Rico, if a copyrightable work was created on or after 1 January 1978, the copyright protection lasts for the life of the author plus an additional 70 years. If the work was created by two or more authors (joint work), the 70-years term is determined considering the last surviving author’s death.

      For an anonymous work, a pseudonymous work, a corporate authorship or a work made for hire, the copyright is protected for a term of 95 years from the year of its first publication or a term of 120 years from the year of its creation, whichever expires first.

      For works created before 1 January 1978, various factors can affect the life of the copyright protection, which include whether the work has been published and the date of publication. For more specific details, see Chapter 3 of the Copyright Act (title 17 of the United States Code) or Circular 15a of the US Copyright Office (Duration of a Copyright).

      Last verified on Friday 3rd March 2017

    • Puerto Rico

      The Digital Millenium Copyright Act, 17 USC section 512(c) (DMCA), which is applicable in Puerto Rico, provides a "safe harbour" to internet service providers (ISPs) against liability for monetary damages over the storage of infringing materials. The liability will be upheld if one of two possible requirements is satisfied: either the ISPs had no actual knowledge of the infringing material because the infringing activity was not apparent; or they did acquire knowledge of the infringing activity, but they quickly moved to disable it and gained no financial benefit from the infringing activity.

      Additionally, the ISPs have a duty to inform their customers of the available policies regarding copyright infringement and the consequences of infringing activity (section 512(i)(1)(A)). There are no specific rules about how this notice must be made. The only express requirement regarding the policies is that they are ‘reasonably implemented’ so as to guarantee that subscribers and account holders are informed of the terms (section 512(i)(1)(A)). As such, one option may be to include the notice as part of the contract signed by the user when signing up for the service or a page on the ISPs website.

      Finally, ISPs are required to follow proper notice and takedown procedures. This is accomplished by expeditiously removing infringing material once proper notice of the infringement has been received from the copyright owner and to notify the person or entity responsible for uploading the infringing material of its removal once it has been completed (section 512(c)(3)(A)).

      Last verified on Friday 3rd March 2017

    • Puerto Rico

      Yes. Federal Copyright Law recognises the ‘first sale’ doctrine. However, the Puerto Rico Moral Right Act of 2012 does not recognise the "first sale" doctrine. Contrary to Federal Copyright Law, which is patrimonial in nature, the Puerto Rico Moral Right Act is directed towards the emotional bond between an artist and his or her work. Thus, the artist retains his or her moral rights even after a single, unconditional sale has taken place.

      Last verified on Friday 3rd March 2017

    • Puerto Rico

      There are two elements required to proving contributory infringement:

      • that the infringer knew or had reason to know of the infringing activity; and
      • active participation in the infringement by inducing it, causing it or contributing to it.

      Last verified on Friday 3rd March 2017

    • Puerto Rico

      Besides the well-known civil remedies that the law guarantees to the owner of an intellectual property right for the infringement of his or her work, there also exist several criminal sanctions that are intended to deter this type of wrongful activity. At federal level, some of these provisions are the following:

      • 18 USC section 2320 – for counterfeit trademark;
      • 18 USC section 2318 – for counterfeit (labelling);
      • 18 USC section 2319 and 17 USC section 506(a) – for copyrighted material; and
      • 18 USC sections 1831 and 1832 – for trade secrets.

      However, not all intellectual property violations have been criminalised. For example, infringement of a patent is not generally sanctioned with criminal punishment.

      Also, and albeit with a more limited scope, at state level, Puerto Rico provides for criminal sanctions for intellectual property violations. The Puerto Rico Penal Code provides for imprisonment or fines for the reproduction, transfer, copying, pressing, labelling, advertising and sale of sound recordings made before 15 February 1972, without the authorisation of the owner, and of live perform­ance recordings and recordings not labelled with the true name and address of the manufacturer with the purpose of distributing them in the Commonwealth of Puerto Rico, so as to obtain personal financial gain and commercial benefits (33 LPRA section 2170.

      It is worth noting that in the recent case of Pueblo v Cardona Soto, 2012 WL 3154987 (29 June 2012), the Puerto Rico Court of Appeals ruled that certain portions of the Puerto Rico Penal Code that deal with copyright infringement collide with federal law, which occupies the field. However, it also ruled that some of the dispositions of the law that were challenged in that case were not pre-empted. As it was discussed in the aforementioned case, the standard to establish the existence of pre-emption is whether the particular right in controversy has been already specifically targeted and protected by federal law or not.

      Last verified on Friday 3rd March 2017

    • Puerto Rico

      Yes. It has been recognised by the Puerto Rico Supreme Court as a corollary of the "right to privacy" and was recently formally codified by the Puerto Rico Legislature through the enactment of the Puerto Rico Right of Publicity Act of 2011, Act No. 139 of 13 July 2011.

      The Act’s primary purpose is to establish the existence of a proprietary right to protect and manage a person’s image, likeness or voice against the unauthorised projection or representation of the same by any method or technique of reproduction, as well as to delineate the guidelines to be followed in the application of the same. To achieve this, the Act creates a cause of action for any natural or legal person whose image, likeness or voice has been used for commercial or advertising purposes without their prior consent. The available remedies are injunctions, damages or statutory damages. However, the statute of limitations to bring forth this cause of action was limited to one year from the date upon which the person concerned acquired or should have acquired knowledge of the emergence of the facts giving rise to the cause if action.

      Last verified on Friday 3rd March 2017

    • Puerto Rico

      Legislative activity within the intellectual property field in Puerto Rico has been particularly significant in the past seven years. Our legislative assembly repealed our, then current, trademark act and substantially overhauled it in December of 2009. More recently, and for the first time in Puerto Rico legislative history, a new Trade Secrets Act and a Right of Publicity Act have been approved. In July 2011, several amendments to the Puerto Rico Trademark Act of 2009 were approved by the Puerto Rico legislature. The same were introduced with the intention of further clarifying and widening the protection offered through the Puerto Rico Trademark Act. Among the amendments, the most important one was the inclusion of a deposit for all Federal Certificates of Registration so as to give publicity and protection in Puerto Rico to all federally registered trademarks. Finally, a local Moral Rights Act was approved in 2012.

      Last verified on Friday 3rd March 2017

    • Puerto Rico

      In addition to the Pueblo v Cardona Soto decision, discussed previously, the Puerto Rico Court of Appeals issued the Donate v Universidad de Puerto Rico decision whereby the Court of Appeals held that, under the Puerto Rico Moral Rights Act, moral right violations may be litigated in local court and are not preempted by the Federal Copyright Act.

      Last verified on Friday 3rd March 2017

    • Puerto Rico

      The Puerto Rico Information to Citizens Regarding Security of Information Banks Act, Act No. 111 of 2005, as amended (Act 111) and the Puerto Rico Department of Consumer Affairs Regulation thereunder, require certain entities that own or provide custody of an "information bank" to notify applicable affected parties of security breaches. Act 111 applies with respect to entities that maintain ‘personal information’ belonging to Puerto Rico residents for commercial uses.

      Personal information includes any files that contain the first name or initial and the last name of a person, plus at least one of the following items of information with respect to such person:

      • social security number;
      • driver’s licence or other official identification;
      • bank or financial account information;
      • username and password for access to public or private information systems;
      • medical information protected under the federal HIPAA Act;
      • tax information; or
      • employment evaluations.

      Recently, the Puerto Rico Legislature enacted the Privacy Policy Notification Act of 2012 (Privacy Act). Through it, Puerto Rico aims to guarantee increased privacy on an individual’s confidential information by imposing greater restrictions when that information is shared through the internet.

      Any person or entity doing business through the internet in Puerto Rico is required to comply with the Privacy Act by maintaining a very clear and concise Privacy Policy that remains readily accessible for all Puerto Rico customers so as to provide them with ample opportunity to inform themselves prior to doing business with that person or entity. The Privacy Policy must inform prospective consumers of the type of information the website gathers and the information that it stores in its database; the third-party entities with whom that personal information could be shared; describe the process through which any user may alter or amend his or her personal information and describe the process through which users will be notified of changes or amendments to the Privacy Policy.

      Under the Privacy Act, personal information includes, but is not limited to, the individual’s:

      • full name;
      • social security number;
      • date and place of birth;
      • civil status;
      • gender;
      • address;
      • postal code;
      • e-mail address;
      • telephone number;
      • driver’s licence number;
      • passport number;
      • fingerprints;
      • voice recordings; and
      • retina images.

      Non-compliance with the Privacy Act could lead to the imposition of injunctions, sanctions and administrative fines that could extend to the maximum amount of $50,000.

      Also, Act 115 of 7 October 2009 was enacted to amend sections 182 and 184 of the Puerto Rico Penal Code to include within the criminal types "violation of personal communications" and "disclosure of personal information and data" (see the Act’s Statement of Motives). Article 182 of the Puerto Rico Penal Code, 33 LPRA section 4811 now provides that any person who, without being authorised to do so, takes possession, uses, modifies or alters to the detriment of the owner of said information or of a third party, reserved, private or family information of a personal nature belonging to another which is recorded on disks or in electronic data files, or other type of file or register, whether public or private, shall incur a fourth-degree felony. Accordingly, article 184, 33 LPRA section 4812, provides that any person who discloses, publishes, reveals or passes on to a third party the information, communications, discovered findings or captured images referred to in sections 4810 (Breach of Personal Communications) and 4811 (Alteration and Use of Personal Information on File), or who establishes a business to distribute or provide access to information obtained by other persons in violation of the referred sections or offers or solicits such distribution or access within the jurisdiction of Puerto Rico, shall be guilty of a fourth-degree felony.

      Last verified on Friday 3rd March 2017

    • Puerto Rico

      The Puerto Rico Patients’ Bill of Rights and Responsibilities Act, as amended, Act No. 194 of 25 August 2000 (Act 194), provides for certain privacy and confidentiality rights with respect to a patient’s medical information and records in Puerto Rico. Failure to protect said medical information and records by a medical provider are subject to complaint procedures with the Puerto Rico Department of Health and possible imposition of administrative fines.

      Last verified on Friday 3rd March 2017

    • Puerto Rico

      In the event that a breach of personal information occurred, where Act 111 applies, the owner or custodian of the applicable information bank must notify the affected individual and the Puerto Rico Department of Consumer Affairs (DACO) within 10 days of the breach. Failure to comply with these notice requirements could be subject to administrative fines by DACO.

      Last verified on Friday 3rd March 2017

    • Puerto Rico

      Online behavioural advertising (OBA) is not regulated at state level in Puerto Rico, but at federal level there are specific regulations for the collection of data pertaining to children under the age of 13.

      The Children’s Online Privacy Protection Act (COPPA) of 1998, 15 USC sections 6501-6508 and the Children’s Online Privacy Protection Rule, 16 CFR Part 312, were enacted to protect children’s online privacy by providing their parents with control over the type and amount of information that is collected from them through the internet. This regulation applies to operators of commercial websites and online services that collect any personal information from a child by any means, including but not limited to:

      • requesting that children submit personal information online;
      • enabling children to make personal information publicly available through a chat room, message board or other means, except where the operator deletes all individually identifiable information from postings by children before they are made public, and also deletes such information from the operator’s records; or
      • the passive tracking or use of any identifying code linked to an individual, such as a cookie (16 CFR part 312.2).

      The regulation requires that said operators:

      • provide notice on the website or online service of what information it collects from children, how it uses such information, and its disclosure practices for such information;
      • obtain verifiable parental consent prior to any collection, use or disclosure of personal information from children;
      • provide a reasonable means for a parent to review the personal information collected from a child and to refuse to permit its further use or maintenance;
      • not condition a child’s participation in a game, the offering of a prize, or another activity on the child disclosing more personal information than is reasonably necessary to participate in such activity; and
      • establish and maintain reasonable procedures to protect the confidentiality, security, and integrity of personal information collected from children (16 CFR part 312.3).

      Last verified on Friday 3rd March 2017

    • Puerto Rico

      In response to the European Commission Directive on Data Protection that could interrupt transfers of personal information from Europe to countries whose privacy practices are not deemed "adequate", the US Department of Commerce and the European Commission developed a ‘safe harbour’ framework that allows US organisations to satisfy the European Directive’s requirements and ensure that personal data flows to the United States (including Puerto Rico) are not interrupted.

      Intended for organisations within the EU or US (including Puerto Rico) that store customer data, the safe harbour principles are designed to prevent accidental information disclosure or loss. US companies can opt into the program as long as they adhere to the seven principles outlined in the Directive.

      Last verified on Friday 3rd March 2017

    • Puerto Rico

      The primary regulatory authorities responsible for data protection in Puerto Rico are the Department of Consumer Affairs, as provided by Act 111, and a Special Division within the Puerto Rico Ombudsman Office, that was created through Act 97 of 19 June 2008 for the specific purpose of overseeing the protection of consumers’ data.

      The Department of Consumer Affairs as the entity responsible of enforcing Act 111 may impose fines of US$500 up to a maximum of US$5,000 for each violation of the provisions of Act 111. The fines provided in Act 111 do not affect the rights of the consumers to initiate actions or claims for damages before a competent court.

      Last verified on Friday 3rd March 2017

    • Puerto Rico

      Regulation 7376 from the Puerto Rico Department of Consumer Affairs seeks to protect consumers that are victims of identity theft. It also protects consumers’ good name and credit, and safeguards the integrity of their personal information. It aims to lay down the rights and responsibilities of any entity that owns or maintains databases that include personal information from citizens residing in Puerto Rico, as well as the responsibilities and obligations of any entity that provides access to such information. On the other hand, it defines terms, explains the powers of the Department of Consumer Affairs and establishes procedures and penalties applicable to people who violate this regulation.

      Last verified on Friday 3rd March 2017

    • Puerto Rico

      There are no cybercrime laws in Puerto Rico that provide for civil remedies in connection with either computer intrusions or theft of intellectual property. However, the Spyware Governing Act of 2008 (Act 165), which prohibits the use or installation of spyware in a computer for any given purpose (including the collection, by means of deceit or ruse, of confidential personal information of the authorised user or owner) unless there is the informed and express consent by the owner or the authorised user thereof, provides that any person who, with the intention of deceiving or causing financial or any other kind of harm, knowingly and intentionally violates any of the provisions Act 165, shall be guilty of a fourth degree felony and the punishment established in the Penal Code of the Commonwealth of Puerto Rico (ie, imprisonment between six months and three years). 

      Last verified on Friday 3rd March 2017

    • Puerto Rico

      Income for the use of intellectual property within Puerto Rico is taxed at:

      • the normal corporate graduated tax rates of 20 per cent to 30 per cent on net royalty income (Gross royalties less related expenses) if derived by a Puerto Rico corporation or by a non-Puerto Rico corporation that is engaged in the conduct a Puerto Rico trade or business;
      • the normal individual graduated tax rates of 8 per cent to 33 per cent on net royalty income (gross royalties less related expenses) if derived by a resident of Puerto Rico or a citizen of the United States; or
      • at a 29 per cent withholding tax rate on gross royalties if derived by an individual that is not a citizen of the United States or a resident of Puerto Rico or a non-Puerto Rico corporation that is not engaged in the conduct of a Puerto Rico trade or business.

      Any dividends declared and paid by a Puerto Rico corporation will be subject to an additional dividend tax of 10 per cent to 20 per cent and any reduction in the Puerto Rico equity of a non-Puerto Rico corporation that is engaged in the conduct a Puerto Rico trade or business will be subject to an additional 10 per cent branch profits taxes.

      Puerto Rico has no international tax treaties that provide for the elimination or reduction of its income taxes on royalty payments. IP development costs must generally be capitalised and amortised over the useful life of the intangible property and not deducted as incurred. The above rules apply to all intangible assets regardless of whether they are eligible for legal protection under applicable IP law. Puerto Rico has no specific tax measures in place to combat base erosion through the payment of royalties to IP companies located in low-tax jurisdictions. Domestic businesses may participate in cost-sharing arrangements to develop or improve IP rights.

      Last verified on Friday 3rd March 2017

    • Puerto Rico

      In the United States, both IP and antitrust are fields principally regulated and enforced at federal level. Patents and copyrights are protected by the constitution itself, whereas the Sherman Act and the Clayton Act outlaw monopolies and antitrust. These bodies of law apply in Puerto Rico, as they do in the continental USA.

      Patent and copyright misuse doctrines limit the improper use of exclusive rights. The Patent Misuse Amendment Act of 1988 made it clear that a patent cannot be deemed unenforceable due to a refusal to license. Specifically, the statute establishes that no patent owner otherwise entitled to relief for infringement or contributory infringement of a patent shall be denied relief or deemed guilty of misuse or illegal extension of the patent right by reason of:

      • derived revenue from acts which if performed by another without his consent would constitute contributory infringement of the patent;
      • licensed or authorised another to perform acts which if performed without his consent would constitute contributory infringement of the patent;
      • sought to enforce his patent rights against infringement or contributory infringement;
      • refused to license or use any rights to the patent; or
      • conditioned the licence of any rights to the patent or the sale of the patented product on the acquisition of a licence to rights in another patent or purchase of a separate product, unless, in view of the circumstances, the patent owner has market power in the relevant market for the patent or patented product on which the licence or sale is conditioned (35 USC 271(d)).

      Unlike a patent, which protects an invention not only from copying but also from independent creation, a copyright does not preclude others from independently creating similar expression. Trade secret protection applies to information whose economic value depends on its not being generally known. Trade secret protection is conditioned upon efforts to maintain secrecy and has no fixed term. As with copyright protection, trade secret protection does not preclude independent creation by others.

      With these principles in mind, the US Department of Justice and the Federal Trade Commission issued the Antitrust Guidelines for the Licensing of Intellectual Property on 6 April 1995. These Guidelines state the antitrust enforcement policy of both Agencies with respect to the licensing of intellectual property protected by patent, copyright, and trade secret law, and of know-how. According to these Guidelines, although there are clear and important differences in the purpose, extent and duration of protection provided under the intellectual property regimes of patent, copyright and trade secret, the governing antitrust principles are the same. Antitrust analysis takes differences among these forms of intellectual property into account in evaluating the specific market circumstances in which transactions occur, just as it does with other particular market circumstances.

      Last verified on Friday 3rd March 2017

    • Puerto Rico

      As part of a bankruptcy proceeding, a debtor may decide to assume or reject an executory contract. Licence agreements are deemed ‘executory contracts’ as executory contracts have been defined by jurisprudence as contracts on which performance is due to some extent on both sides. Section 365(n) of the Federal Bankruptcy Code allows licensees to continue using the intellectual property even after a debtor has rejected the contract if certain conditions are met. However, trademarks are not part of the definition of intellectual property under the Bankruptcy Code, thus a trademark licence agreement may be rejected by a debtor, resulting only in a pre-petition damages claim.

      When a licensee files for bankruptcy protection, the Bankruptcy Code provides a restriction on the assumption and assignment of the licensing contract to third parties when “applicable law” precludes such an arrangement. “ Applicable law” includes the relevant intellectual property law and contract law, which may preclude assignments (11 USC section 365(c)). However, in Puerto Rico, the determination of whether a licensee may assign or assume a licensing agreement is made on a case-by-case basis, analysing future performance and the non-debtor’s “full benefit of its bargain”.

      Last verified on Friday 3rd March 2017

Latin Lawyer gives you a fantastic platform to promote your legal expertise to our extensive readership base

Become an author

Contributing editors

Authors