Intellectual Property

Paraguay

Lorena Mersan and Liliana Nolan
Mersan Abogados
  1. 1.

    What are the novelty or inventiveness requirements for a patent to be granted?

  2. In Paraguay, for a patent to be granted requires absolute novelty. An invention is considered novel if there is no previous record thereof in the view of prior art. According to the Patent Law, the view of prior art encompasses all that has been revealed or made accessible to the public, anywhere in the world and by any means, prior to the date of filing of the patent application in our country, or before the priority date invoked in a patent application.

    However, the view of prior art does not include what has been made known publicly during the year preceding the filing date of the application in Paraguay, or within the year preceding the date of the application priority that is being claimed; if such disclosure has resulted directly or indirectly, from actions performed by the inventor or inventors or his rights holder or holders. Moreover, products or procedures comprised in the view of prior art cannot be the subject of a new patent for the sole reason of having a different use from the original patent.

  3. 2.

    What are the criteria for considering whether an invention is obvious in view of prior art?

  4. The criteria are that a qualified person in the technical field of the invention will not consider the invention as obvious or that the invention itself has not been obtained in a way that is evident to the technical field.

  5. 3.

    What are the different types of patent protection that can be obtained in your country, for example, utility, design database? How do these types of patent protection differ?

  6. The two different types of patent protection are patent of invention and patent of utility. The main difference between the two is the level of inventiveness. In a patent of utility, the level of inventiveness is less than that required for a patent of invention. Patent of utility refers to inventions applied to a form, configuration or placement of device elements, tools, instruments, mechanism or other objects, or of a part thereof, that allows a better or different operation, use or fabrication, or that offers any use or technical effect that it did not have before. Another distinction is the period of protection: a patent of invention protects for 20 years and patent of utility for only 10 years.

    In addition, patent of inventions may be divided into two subcategories: patent of products and patent of methods or procedure, depending on the type of invention that is actually protected.

  7. 4.

    What is the duration of patent rights protection?

  8. According to Law No. 1630/200 (Patent Law), a patent is granted for a period of 20 years, from the date of the patent application. This term cannot be renewed and once it lapses the patent enters the public domain.

  9. 5.

    If an invention is conceived in your country, does the first filing have to be made there?

     

  10. It is not required that the first filing is made in Paraguay if an invention is conceived here.

  11. 6.

    What are the foreign filing licence requirements if an application conceived in your country is filed first in another?

  12. In the absence of contractual licences, the following rules shall apply to the exploitation licences of an invention:

    • the licence shall extend to all exploitation acts of the invention, in all the national territory and in regard to any application of the invention;
    • the licence holder may not assign the licence nor grant sublicences;
    • the licence shall not be exclusive: the licensor holds the right to grant other exploitation licences in the country, as well as to exploit the patent in the country on his own; and
    • when the patent has been granted as exclusive, the licensor may not, on his own, exploit the licence in the country.
  13. 7.

    Are business and computer methods patentable? If yes, what are the standards for determining this? If no, are other technological areas that are not eligible for patent protection?

  14. Business and computer methods are not patentable in Paraguay. Additional matters that are not are eligible for patent protection are:

    • simple discoveries, scientific theories and mathematical methods;
    • purely aesthetic creations;
    • economic, business, advertising or publicity schemes, plans, principles or methods, and those referring to purely mental or intellectual activities or playing matters;
    • diagnostic, therapeutic, surgical methods for the treatment of persons or animals;
    • various forms or reproducing information;
    • inventions the commercial exploitation of which must be necessarily prevented in order to protect the moral and public order, as well as health, lives of individuals or animals, and preserve plant life, or in order to avoid severe damages to the environment; and
    • plants and animals, excluding microorganisms, and the biological procedures for the production of plants or animals.
  15. 8.

    Summarise the current level and nature of patent litigation in your country? Are there particular litigation trends related to specific industries, such as the pharmaceutical, payments, data analytics?

  16. The current level of patent litigation in Paraguay is very limited since there have been few cases. Most patent litigation relates to the chemical industry for herbicides.

  17. 9.

    What remedies are available for patent holders? For example, are monetary damages and injunctive relief available? If monetary damages are available, are such damages based on a reasonable royalty, lost profits or other provisions?

  18. The remedies available for patent holders are civil actions. The civil actions are regulated by the Civil Law and Civil Procedure Law 1988. Patent holders can claim monetary damages when there has been an unauthorised registration of an invention by a party that is not entitled to do so, or an unauthorised use of an invention. The estimation of damages is based on:

    • the direct damages and loss profits or the amount of benefits obtained by the infringer; and
    • the price the infringer would have paid for a contractual licence, bearing in mind the market value of the right infringed, as well as a reasonable royalty.

    Also it contemplates the damages derived from prestige loss caused by the infringer.

    In the event that the patent is a procedure to obtain a new product, the judicial authority may transfer the burden of proof to the defendant, which has to prove that the identical product has not been obtained by use of the patented procedure.

    The civil actions prescribes two years from the date that the holder becomes aware of an infringement, or four years counted from the last acts of infringement, applying the deadline that expires firstly.

    Precautionary measures are also offered to patent holders. These measures may be requested prior to initiating the action, concurrently therewith or after initiation thereof. There is no autonomous precautionary action in Paraguay; consequently, this measure can only be obtained as part of a civil action.

    The available precautionary measures are:

    • immediate cessation of those acts constituting the infringement;
    • injunction or seizure of the products resulting from the infringement, as well as the materials, instruments and anything that served mainly to commit the infringement; and
    • suspension of importation or exportation of the products, materials and so on, necessary for the infringement.

    The new Criminal Code enacted in 2005 has increased the penalties against trademark infringers and decriminalised the infringement of patent inventions.

  19. 10.

    Is your country considering major changes to its patent system?

  20. Our country is not considering major changes to its patent system. There is no political interest in doing so.

  21. 11.

    Does your country recognise the "patent exhaustion" doctrine, and, if so, how does the application of the doctrine compare with those in other jurisdictions?

  22. The Paraguayan Patent Law expressly provides the patent exhaustion doctrine. The patentee’s rights are exhausted when a third party acquires the patent products when it has been lawfully introduced into the market by the patentee, its legal representatives, or licensees. Therefore, the patentee cannot prevent such third party from carrying out acts of commerce in any country with respect to the acquired patented product.

    When comparing the application of the doctrine in Paraguay to that of the other countries that are part of the MERCOSUR, the application in Paraguay should be very similar to the application in Brazil, Uruguay and Argentina, considering that the legislation of these four countries are very much the same, with a few slight differences.

  23. 12.

    Is your country a signatory to or likely to join the Madrid Protocol and if so, when? Is it a signatory to the TRIPs agreement?

  24. Paraguay is a signatory of the TRIPs agreement by Law No. 444 of 1994. It is not a signatory of the Madrid Protocol, nor is it likely to join it.

  25. 13.

    Do your trademark clients make use of the Andean Community’s or Mercosur’s regional trademark systems and if so, how?

  26. Our trademark clients do not use either of the regional trademark systems. The MERCOSUR Protocol on Intellectual Property only rules in Paraguay and Uruguay since Brazil and Argentina are not signatories of this protocol.

  27. 14.

    What is the duration of trademark rights protection?

  28. According to Law No. 1294/98 (Trademark Law), a trademark registration shall be valid for a period of 10 years and may be renewed indefinitely for equal periods of 10 years.

  29. 15.

    What rules govern the use of the registered trademark symbol, ®, or the unregistered trademark symbol, ™ , in your country?

  30. In Paraguay, there are no established rules that govern the use of the registered or unregistered trademark symbols. Either symbol can be used.

  31. 16.

    What are the main problems affecting trademark owners in your country, and what strategies have successfully addressed these problems?

  32. The main problems affecting trademark holders are counterfeiting, corruption and the enforcement of our Trademark Law. As a result, these situations only favour and attract more infringers in detriment of trademark holders. Unfortunately, there have not been any successful strategies to address these problems.

  33. 17.

    Does a trademark licence have to be recorded in your country to be effective?

  34. Licences to use a trademark shall be registered in the Trademark Office to have legal effects before third parties. The trademark licence agreement shall necessarily contain provisions that secure control by the owner over the quality of the products and services that are the subject of the licence, without prejudice to the control that may be performed by the competent authority in defence of consumers.

  35. 18.

    What strategies have been successful in combating counterfeiting in your country?

  36. In order to comply with the Trademark Law and the TRIPs Agreement, the Custom Office created in 2008 a Border Control Program to combat counterfeiting through a registry of trademarks at the Customs Office. Regrettably this system has not been as effective as expected, mainly due to the constant change of customs authorities. The private sector is currently very involved in the fight against counterfeit by training prosecutors and custom authorities.

  37. 19.

    Does a foreign company’s website infringing trademarks constitute use of a trademark in your country?

  38. It doesn’t constitute use, although there is no case law that supports this reasoning.

  39. 20.

    Do you recommend that companies register their domain name in your jurisdiction if they do business there?

  40. Yes, we recommend companies register their domain names if they are going to do business in Paraguay as it constitutes an additional element of proof in case of an infringement.

  41. 21.

    Briefly highlight any particularities of your trademark law that is not well understood by foreigners doing business in your country.

  42. Our Trademark Law is very modern and in accordance with trademark international treaties such as: the Paris Convention, the TRIPs Agreement and the WIPO Treaties. The problem lies in the enforcement of the law.

  43. 22.

    What are the key legal issues to be considered when registering a trademark in your country?

  44. Legal issues that should be considered before registering a trademark in Paraguay is the performance of a trademark search and, once registered, to start the use of the trademark within five years after the registration is granted, so as to avoid cancellation actions for non-use.

  45. 23.

    Can a multi-class trademark application be filed in your country?

  46. Multi-class trademark applications are not available in Paraguay.

  47. 24.

    Does your country allow trademark opposition proceedings? Can the deadline to file an opposition be extended?

  48. Trademark oppositions are allowed in Paraguay. The deadline to file an opposition is within 60 working days from the last publication date. This deadline cannot be extendable.

  49. 25.

    Does your country have a judicial or other governmental process to restrict the importation of counterfeit goods? If so, give details.

  50. Yes. The Paraguayan Trademark Law expressly establishes the so-called “Measures at the Border” which are legal restrictions to the importation of counterfeit products and act as precautionary means for the owner of the trademark that is being infringed. In effect, the Trademark Law sets forth that the proprietor of a registered trademark, who has founded reasons to believe that the import of products that may violate his rights is imminent, may request the Customs Authorities to cease such import at the time of shipment.

    However, the party requesting such measure is compelled to furnish the Customs Authorities with all the information that may be deemed necessary, as well as a precise description of the merchandise, so that it may be recognised.

    The party should also file a lawsuit for trademark infringement before the competent judicial authority within the term of 10 working days and give notice that such lawsuit has been commenced to the Customs Authorities; otherwise, the measures will be revoked.

    When the suspension of import has been imposed, the Customs Authorities have to notify both the importer and the applicant, immediately. These measures can be later modified, revoked or confirmed by the corresponding judicial authority.

    In some cases, the judicial authority may require the deposit of a sufficient security.

    The Trademark Law also establishes that trademarks may be registered before the Customs Office in order for the officers to test the legitimacy of goods which shipment is requested. However, this registration is only a security measure and is by no means mandatory for the effective implementation of the rights contemplated by the Law.

    In addition, the Trademark Law prevails that the owner of a registered trademark or trade name may file a lawsuit for trademark infringement when a third party has affixed or placed a mark or distinctive sign on products for which his trademark has been registered, requesting the corresponding judicial authority to establish a precautionary measure in order to suspend the import of the contravening products into the country; when the measure has already been ordered by the Customs Authorities, the judicial authority will be empowered to either confirm and extend it, revoke the measure or modify the measure, as mentioned in the paragraphs above.

    The compensation of damages may be requested and granted; also, the destruction of the products may be ordered.

    Criminal punishments are also contemplated by the Paraguayan Legislation, when there is a violation an intellectual property right; particularly, with respect to counterfeit goods, the Trademark Law establishes that the falsification or adulteration of a registered trademark leads to a criminal punishment of one to three years of imprisonment and a fine of one thousand to three thousand minimum wages; and the Paraguayan Penal Code sets forth that the falsification, adulteration or fraudulent imitation of a registered trademark can result in a punishment of up to five years of imprisonment, unless the case is extremely serious – as defined by the Penal Code - in which case the imprisonment can be of between two and eight years.

  51. 26.

    What are the key issues to be considered when licensing trademark use rights in your country? Does your jurisdiction invalidate trademarks based on "naked licences" (ie, where the licensor does not impose quality standards on the goods and services associated with the licensed trademark)?

  52. The only “key issue” to be considered when licensing trademark use rights in Paraguay is that all licence agreements should contain terms that guarantee the owner’s control over the quality of the products or services that are the subject of the licence. However, it does not invalidate trademark based on naked licences. 

  53. 27.

    Are there any limits on the scope of licensee indemnification relating to workmanship, material, or design of any products, articles, logos, characters, etc, bearing the licensed trademark?

  54. No. The Trademark Law sets no such limits and thus, they are subjected to what is initially agreed upon by the parties in the Licence Contract or Agreement.

  55. 28.

    Under what circumstances may a trademark licence be deemed a franchise arrangement under the laws of your country?

  56. A trademark licence may be considered a franchise arrangement when it reunites the requirements and characteristics of a franchise, that is to say, there is a transfer of a set of intellectual property rights, including patents, trade secrets, etc, rather than only one intellectual property asset, such as the right to use a trademark; in particular, an agreement is considered a franchise when the arrangement between the parties contemplates products and services starting with the manufacture, supply for manufacture, distribution and sales of products to the provision of services, its commercialisation, distribution and sales; there is a transfer of the know-how of the business model concerned; and a series of obligations for both parties: the franchiser having to either supply knowledge, training, raw material for the elaboration of goods; and the franchisee having to provide labor or manpower, investment capital and the payment of a royalty for the use of the franchise.

    There is no franchise law in Paraguay; consequently, a franchise arrangement is subjected to the provisions of the Civil Code regarding the contracts in general. Additionally, the Trademark Law stipulates that the franchise arrangements, in so far as they are related to the licence of trademarks, shall be regulated by the norms concerning the Licenceof Trademarks and therefore shall be registered before the National Office of Intellectual Property in order to be enforceable against third parties.

  57. 29.

    Are there any conditions or limitations on the ability of a trademark licensor to enforce or terminate a trademark licence agreement?

  58. No, there are none in the Trademark Law, consequently, the termination of a licence agreement is subjected to what was accorded by the parties in the respective contract or by the general provisions of the Paraguayan Civil Law for the termination of contracts.

    For example, the concerned party can file a lawsuit for breach of contract if the other party has failed to comply with the terms and conditions set forth in the licence agreement, demanding the termination of the contract and the compensations of damages, if applicable.

  59. 30.

    Under what circumstances may a trademark be legally deemed "abandoned" under the laws of your country where there is no obvious decision by the trademark owner to abandon the trademark?

  60. A trademark may be deemed abandoned when its owner fails to renew it within the term provided by the law, that is to say, six months from the date it officially expired.

  61. 31.

    Is copyright registration recommended for local packaging and marketing materials?

  62. We recommend copyright registration for local packaging and/or marketing materials in order to extend the scope of protection.

  63. 32.

    What is the duration of copyright protection?

  64. Law No. 1328/98 (Copyright Law) sets forth that the economic rights granted by copyright are valid throughout the author’s lifetime and for 70 years after his or her death.

    The moral rights granted by copyright have no term of expiration and continue to be in force even though the work concerned has entered the public domain.

  65. 33.

    Are there any recognised legislative safe harbours that protect internet service providers in your country from liability for the activities of its users? If so, what are the requirements or processes Internet providers must follow to claim safe harbour?

  66. Yes. The recently sanctioned Law on E-commerce establishes that the providers of intermediation services, hosting services, connection services and temporary copy services are not responsible for the information that is transmitted, stored at the request of the user, directed to the user or its contents or temporary reproduction, respectively, when they have no knowledge with regards to the contents of the information, did not begin the transmission of the data themselves (providers of intermediation services), or they are unaware that the information is illicit or illegal.

    The immediate removal of the illegal or illicit information is required in most cases.

  67. 34.

    Does your country recognise the 'first sale' doctrine for purposes of limiting copyright enforcement?

  68. Paraguayan legislation recognises a very limited “first sale doctrine” for purposes of limiting copyright enforcement. There are restrictions to the copyright owner´s exclusive economic rights. In this sense, copyrighted works may be legally displayed without the authorisation or payment of a royalty to the author in certain cases. For example, when the work is displayed in a domestic environment without monetary interests. Or when the copyrighted work is used for educational purposes or when musical works are partially reproduced for matters of public interest. Consequently, it is presumed from the copyright legislation that there are exemptions to the author's exclusive right so long as the acts concerned do not have an economic or monetary intention. The only exception applies for artistic works, which can be publicly displayed either for a value or gratuitously by the lawful owner of a copy of a copyrighted work, unless otherwise stipulated in the sales contract. However, when there is a sale of an artistic work involve, the seller must pay a 5 per cent fee over the resale price to the author or his or her heirs.

  69. 35.

    What is the standard of contributory copyright infringement in your country?

  70. There is no standard of contributory copyright infringement in Paraguay. Nevertheless, from the interpretation of our Copyright Law, we can conceive that copyright owners can likewise claim damages to contributory infringers.

  71. 36.

    What are the criminal sanctions for intellectual property infringements?

  72. With regards to copyright and according to the Paraguayan Criminal Code, the following acts are considered criminal offences and therefore sanctioned:

    • the unauthorised reproduction of copyright works;
    • the unauthorised introduction to the country, storage, distribution, sale, rental or the making available to the public of copyright works;
    • the public communication, totally or partially, temporarily or permanently of protected works by means of non-authorised reproductions;
    • the retransmission of works by radio broadcasts;
    • false claim of authorship of a copyright work in order to put into effect the rights that such position grants;

    All of the above are sanctioned with up to five years of imprisonment or a fine. Further, phonograms, translations, artistic representations, among other examples, are protected in the same way.

    Additionally, the non-authorised modification, alteration or transformation of the technical measures for protection of copyright works or the non-authorised manufacture, reproduction, acquisition, storage or public advertisement of devices that specifically enable the elusion, neutralisation or suppression of such technical measures are also sanctioned with a penalty of up to three years’ imprisonment or a fine.

    With respect to trademarks, the Paraguayan Criminal Code stipulates that whoever falsifies, adulterates or falsely imitates a registered trademark with respect to the same or similar goods or services protected by such trademark or; stores, sells, or makes available goods or services that carry a false trademark shall be punished with up to five years’ imprisonment.

    The same penalty prevails when someone commits the above-mentioned offences but with respect to patents or industrial models or designs.

    Moreover, there are aggravating factors (for example, the fact that the goods concerned have a high economic value) that may raise the penalty to up to eight years’ imprisonment.

  73. 37.

    Does your country recognise intellectual or industrial property protection in databases?

  74. Databases are protected through the copyright system. The requirement for their protection are that the databases should be original, either by the way of its selection, coordination, or the arrangement of their contents.

  75. 38.

    Does your country recognise a right of publicity?

  76. The Paraguayan Constitution grants very strong protection to a person’s private image and the right to privacy. It stipulates that personal and family privacy, as well as, one’s private life, are inviolable. The right to privacy, personal dignity and private image are secured.

    Moreover, section VII – Criminal Offenses against people’s private lives and privacy – demands criminal sanctions for the violation of such rights, throughout articles 141 to 149.

    Specifically, article 143 of the Paraguayan Criminal Code stipulates that whoever violates a third party’s privacy in public through publications as set forth in article 14 of the said body of laws, shall be punished with a fine.

    In the same way, article 144 of the mentioned Code specifies that whoever listens, records, stores or makes available to third parties and without the concerned person’s consent, another person’s statement that is not to be publicly known, shall be punished with imprisonment of up two years or a fine; the same sanction is stipulated for someone who transmits or produces someone else’s images without the authorisation of the person concerned, within his private residence, in a third party’s residence or elsewhere, thus violating the right of the person concerned to his private life.

    However, the Constitutional protection refers only to the private sphere of a person’s life and not his or her image with regards to the execution of public responsibilities; it should also be noted that there are no regulations in Paraguay that refer to image as a property right (versus a personality right) and the right to its commercial exploitation.

  77. 39.

    Is alternative dispute resolution used in your country to resolve intellectual property disputes? What are the benefits or dangers of using ADR for IP disputes?

  78. Alternative dispute resolutions are not yet used in Paraguay to solve intellectual property disputes. ADR is a relatively new field in Paraguay, although the inclusion of ADR clauses in contracts, such are licences and franchise contracts, is becoming more frequent.. It would be a great action to implement it since our judicial branch is currently very affected by bureaucratic delays and acts of corruption. ADR could be an innovative and effective tool since it yields a rapid mechanism for conflict solving, as well as for reducing costs.

  79. 40.

    Can intellectual property rights be recorded with certain government agencies in your country, like Customs or the Border Control, to help prevent the import or export of counterfeit goods?

  80. Trademarks can be recorded at the Customs Office. Once they are registered at the General Customs Department, the trademark owner may request to be informed of the customs clearance of goods that have a registered trademark and whose manufacturer is not the owner. The owner may also demand that the clearance of such goods be suspended until their legitimacy is proven. As mentioned before, this system is not yet effective in preventing the import or export of counterfeit goods.

  81. 41.

    Describe any recent major developments or anticipated changes in your intellectual property law.

  82. In June 2011, 13 years after the Copyright Law was promulgated, the Paraguayan Executive Branch regulated Decree No. 6780, which demands “compensation rights for private copies”. This decree has empowered the Paraguayan Society of Artists, Interpreters and Performers to collect a compensatory royalty for the personal use of a copyrighted work. The parties forced to pay are the national manufacturers and importers of digital devices capable of reproducing, recording or communicating pictures or audiovisual works. The devices that fall under this decree include: mobile phones, sound recording devices, CDs, DVDs, pen drives, mp3 players, memory cards, broadcasting apparatuses, and so on. The price of the digital royalty is based on “transfer price”, either the sale price or the price recorded for customs purposes in the case of importers.

    This scenario has generated a new debate between the copyright owners, and the manufacturers and distributors of digital devices. Recently, some digital device importers filed an unconstitutional action against the decree since they consider that it violates the provision of presumption of innocence and double taxation. Currently, this complaint is pending a decision by the Supreme Court.

  83. 42.

    Describe any significant recent court decisions in your country relating to intellectual property.

  84. A significant court decision was introduced in the fields of patents. The previous Patent Law granted patents a 15-year term protection. After the TRIPs Agreement was ratified in Paraguay, the term of patent protection was extended to 20 years. In 2010, the Administrative Court of Appeals declared that all patents falling under the previous legislation are still valid until the 20-year term has been completed.

  85. 43.

    Are there any licence agreement formalities for intellectual property that must be observed?

  86. The formalities are the following:

    • Registration before the National Office of Intellectual Property by either the licensor or the licensee;
      • Filing of a copy of the licence agreement (a short version is acceptable), in Spanish;
      • If the document is in a foreign language, it has to be translated into Spanish, by a duly sworn translator in Paraguay; if the agreement was not signed in Paraguay, it needs to be notarised and legalised by the Paraguayan Consulate.

    The Apostille Convention entered into force in August 2014. Consequently, as of 1 September 2014, documents drawn up in a country that is party to the Convention no longer require consular legalisation; they only require the Apostille from the competent public entity in their country.

  87. 44.

    Does your country have a cybercrime law that provides for civil remedies in connection with either computer intrusions or theft of intellectual property? Are other causes of action or remedies available in your jurisdiction as regards unauthorised computer intrusion and misappropriation of electronic information? 

  88. Our country regulates the protection of personal information through Law No. 1.969/01 and 1.682/02. According to these laws, all individuals have the right to collect, store and process personal data, but only for exclusively private use.

    The intention of this framework was mainly to regulate those who reveal or estimate the patrimonial situation, economic solvency or compliance of commercial and financial obligations of individuals and entities. This information can be revealed if they comply with the following requirements:

    • when there is express and written authorisation;
    • when public or private entities must be made public in order to comply with specific legal provisions; and
    • when the data can be found in public sources of information.

    The consequences of non-compliance are monetary penalties. Additionally, the affected party can file criminal or civil complaints for damages.

  89. 45.

    Briefly describe the tax considerations for intellectual property in your jurisdiction including any incentives.

  90. Our legal framework distinguishes between sensitive and non-sensitive data.

    Sensitive data is that which makes reference to racial or ethnic preferences; political preferences; individual health status; religious, philosophical or moral convictions; sexual intimacy; and in general anything that can promote prejudice and discrimination, or that affects the dignity, privacy, domestic intimacy and private image of individuals or families.

    Non-sensitive data is not defined in our legal framework, therefore it is to our understanding that non-sensitive data is everything that is contrary to sensitive data.

  91. 46.

    Briefly describe the intersection between intellectual property and competition law in your jurisdiction.

  92. A special data protection rule only applies to financial services. Financial entities, as well as their directors and employees are forbidden to provide any information on transactions with customers, unless with written authorisation.

  93. 47.

    Briefly explain the implications of a bankruptcy filing under the laws of your jurisdiction on intellectual property licensed rights.

  94. No.

Interested in contributing to Latin Lawyer Reference?


Questions

  1. 1.

    What are the novelty or inventiveness requirements for a patent to be granted?


  2. 2.

    What are the criteria for considering whether an invention is obvious in view of prior art?


  3. 3.

    What are the different types of patent protection that can be obtained in your country, for example, utility, design database? How do these types of patent protection differ?


  4. 4.

    What is the duration of patent rights protection?


  5. 5.

    If an invention is conceived in your country, does the first filing have to be made there?

     


  6. 6.

    What are the foreign filing licence requirements if an application conceived in your country is filed first in another?


  7. 7.

    Are business and computer methods patentable? If yes, what are the standards for determining this? If no, are other technological areas that are not eligible for patent protection?


  8. 8.

    Summarise the current level and nature of patent litigation in your country? Are there particular litigation trends related to specific industries, such as the pharmaceutical, payments, data analytics?


  9. 9.

    What remedies are available for patent holders? For example, are monetary damages and injunctive relief available? If monetary damages are available, are such damages based on a reasonable royalty, lost profits or other provisions?


  10. 10.

    Is your country considering major changes to its patent system?


  11. 11.

    Does your country recognise the "patent exhaustion" doctrine, and, if so, how does the application of the doctrine compare with those in other jurisdictions?


  12. 12.

    Is your country a signatory to or likely to join the Madrid Protocol and if so, when? Is it a signatory to the TRIPs agreement?


  13. 13.

    Do your trademark clients make use of the Andean Community’s or Mercosur’s regional trademark systems and if so, how?


  14. 14.

    What is the duration of trademark rights protection?


  15. 15.

    What rules govern the use of the registered trademark symbol, ®, or the unregistered trademark symbol, ™ , in your country?


  16. 16.

    What are the main problems affecting trademark owners in your country, and what strategies have successfully addressed these problems?


  17. 17.

    Does a trademark licence have to be recorded in your country to be effective?


  18. 18.

    What strategies have been successful in combating counterfeiting in your country?


  19. 19.

    Does a foreign company’s website infringing trademarks constitute use of a trademark in your country?


  20. 20.

    Do you recommend that companies register their domain name in your jurisdiction if they do business there?


  21. 21.

    Briefly highlight any particularities of your trademark law that is not well understood by foreigners doing business in your country.


  22. 22.

    What are the key legal issues to be considered when registering a trademark in your country?


  23. 23.

    Can a multi-class trademark application be filed in your country?


  24. 24.

    Does your country allow trademark opposition proceedings? Can the deadline to file an opposition be extended?


  25. 25.

    Does your country have a judicial or other governmental process to restrict the importation of counterfeit goods? If so, give details.


  26. 26.

    What are the key issues to be considered when licensing trademark use rights in your country? Does your jurisdiction invalidate trademarks based on "naked licences" (ie, where the licensor does not impose quality standards on the goods and services associated with the licensed trademark)?


  27. 27.

    Are there any limits on the scope of licensee indemnification relating to workmanship, material, or design of any products, articles, logos, characters, etc, bearing the licensed trademark?


  28. 28.

    Under what circumstances may a trademark licence be deemed a franchise arrangement under the laws of your country?


  29. 29.

    Are there any conditions or limitations on the ability of a trademark licensor to enforce or terminate a trademark licence agreement?


  30. 30.

    Under what circumstances may a trademark be legally deemed "abandoned" under the laws of your country where there is no obvious decision by the trademark owner to abandon the trademark?


  31. 31.

    Is copyright registration recommended for local packaging and marketing materials?


  32. 32.

    What is the duration of copyright protection?


  33. 33.

    Are there any recognised legislative safe harbours that protect internet service providers in your country from liability for the activities of its users? If so, what are the requirements or processes Internet providers must follow to claim safe harbour?


  34. 34.

    Does your country recognise the 'first sale' doctrine for purposes of limiting copyright enforcement?


  35. 35.

    What is the standard of contributory copyright infringement in your country?


  36. 36.

    What are the criminal sanctions for intellectual property infringements?


  37. 37.

    Does your country recognise intellectual or industrial property protection in databases?


  38. 38.

    Does your country recognise a right of publicity?


  39. 39.

    Is alternative dispute resolution used in your country to resolve intellectual property disputes? What are the benefits or dangers of using ADR for IP disputes?


  40. 40.

    Can intellectual property rights be recorded with certain government agencies in your country, like Customs or the Border Control, to help prevent the import or export of counterfeit goods?


  41. 41.

    Describe any recent major developments or anticipated changes in your intellectual property law.


  42. 42.

    Describe any significant recent court decisions in your country relating to intellectual property.


  43. 43.

    Are there any licence agreement formalities for intellectual property that must be observed?


  44. 44.

    Does your country have a cybercrime law that provides for civil remedies in connection with either computer intrusions or theft of intellectual property? Are other causes of action or remedies available in your jurisdiction as regards unauthorised computer intrusion and misappropriation of electronic information? 


  45. 45.

    Briefly describe the tax considerations for intellectual property in your jurisdiction including any incentives.


  46. 46.

    Briefly describe the intersection between intellectual property and competition law in your jurisdiction.


  47. 47.

    Briefly explain the implications of a bankruptcy filing under the laws of your jurisdiction on intellectual property licensed rights.


Other chapters in Intellectual Property