Intellectual Property

Last verified on Monday 4th June 2018

Bolivia

Alejandra Bernal and Paula Bauer
CR&F Rojas Abogados
  1. 1.

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

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

  3. 2.

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

  4. Solely for the purpose of determining novelty, the contents of a patent application pending before SENAPI and having a filing date or priority application date earlier than the date of the patent or patent priority application under examination, shall likewise be considered part of the state of the art, provided that the said contents are included in the earlier application when published or that the period stipulated in article 40 of Decision 486 of the Andean Pact has concluded.

  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. Utility models, design, layout – designs of integrated circuits and patent inventions

    The SENAPI grants patents for inventions, whether goods or processes, in all areas of technology, that are new, involve an inventive step and are industrially applicable. 

    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.

    The following definitions shall apply for purposes of this Title:

    • 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; and
    • 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.

    The particular appearance of a product that results from any arrangement of lines or combination of colors, or any two-dimensional or three-dimensional outward shape, line, outline, form, texture or material, without the intended use or purpose of the said product being thereby changed, shall be considered an industrial design.

  7. 4.

    What is the duration of patent rights protection?

  8. Patents shall have a term of 20 years counted from the filing date of the corresponding application in the member country.

  9. 5.

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

     

  10. No.

  11. 6.

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

  12. None.

  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. No.

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

    SENAPI shall grant once, upon request, a 60-day extension in which to provide valid reasons for that opposition.

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

    If any objections have been lodged, SENAPI shall request that the applicant present its arguments, submit documents, or rewrite the invention claims or description, as they see fit, within 60 days following that notification.

    SENAPI shall grant applicants once only, upon request, a 60-day extension in which to make their defence against the objections that have been presented.

  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. No.

  19. 10.

    Is your country considering major changes to its patent system?

  20. No.

  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. No.

  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. Bolivia is not a signatory to the Madrid Protocol and is not dueto sign it anytime soon. Bolivia is a signatory to the TRIPs Agreement.

  25. 13.

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

  26. Yes, our trademark system is regulated by Decision 486 of the Andean Pact and therefore our clients must make use of said regulation.

  27. 14.

    What is the duration of trademark rights protection?

  28. Ten years.

  29. 15.

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

  30. None, there is no regulation.

  31. 16.

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

  32. The main problem is counterfeit goods.

    Owners of a right protected by virtue of Decision 486 may bring action with SENAPI against any persons infringing upon their right and also against any persons performing acts that are extremely likely to result in the infringement of that right.

    SENAPI may, ex officio, initiate the proceedings for infringement stipulated in that legislation.

    The plaintiff or defendant may request SENAPI to order one or more of the following measures, among others:

    • a) cessation of all acts that constitute the infringement;
    • b) compensation for damages;
    • c) withdrawal from commercial channels of all products resulting from the infringement, including packaging, wrappings, labels, printed materials or advertising, together with the materials and implements, the predominant use of which has been the commission of the infringement;
    • d) prohibition against the importation or exportation of the products, or materials or implements referred to in the previous item;
    • e) adjudication of the ownership of the products or materials or implements referred to in item c), in which case the value of such goods shall be charged to the amount of compensation due for damages; 
    • f) adoption of the necessary measures to avoid continuation or repetition of the infringement, including destruction of the products or materials or implements referred to in item c) or the temporary or definitive closure of the business belonging to the defendant or the accused; or
    • g) publication of the guilty verdict and notification of interested parties at the infringer’s expense.

    In the case of counterfeit trademark goods, the elimination or removal of that trademark shall be accompanied by actions to prevent the introduction of these products into commerce. Furthermore, such goods shall not be allowed to be re-exported in an unaltered state or to be subjected to a different customs procedure.

    Cases duly qualified by the competent national authority or those expressly authorised by the owner of the trademark shall be excepted.

  33. 17.

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

  34. The owner of a trademark that is registered or being filed for may license one or more parties to use the trademark in question. 

    Any licence that is granted for use of a trademark shall be registered with SENAPI. Failure to register shall render the licence invalid with respect to third parties.

    To be registered, the licence contract and the licence application must be made in writing.

    Any interested party may request the registration of a licence.

    SENAPI shall not register any trademark licensing agreements or assignments or transfers that do not conform to the provisions of the Common Regime for the Treatment of Foreign Capital and for Trademarks, Patents, Licences and Royalties, or that do not conform to Andean Community or domestic untitrust.

    The owner of the registered trademark shall report to the competent national office, during the licence's period of effectiveness, any change in the name or address of the registered trademark owner.

  35. 18.

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

  36. Infringement actions with SENAPI and in coordination with municipal and sanitary entities as well as the Bolivian Customs Office.

  37. 19.

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

  38. No.

  39. 20.

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

  40. Yes.

  41. 21.

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

  42. Generally speaking, internal regulations related to power of attorney requirements and use requirements in order to demonstrate use within a cancellation action.

  43. 22.

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

  44. Use of the trademark should be considered when filing a trademark application to be able to demonstrate said use if a cancellation action arises.

  45. 23.

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

  46. No. SENAPI does not accept multi-class trademark applications.

  47. 24.

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

  48. Yes, Bolivia does allow trademark opposition proceedings and the deadline to file an opposition can not be extended.

  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.

  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. A licence agreement should be recorded with SENAPI to be effective against third parties.

  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.

  55. 28.

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

  56. None.

  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.

  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. Once granted, a trademark registration is valid for 10 years from the issuance date. If said trademark is not renewed once the 10-year validity term arrives, then the trademark has lapsed.

    Also, if the power of attorney requested to demonstrate legal representation is not duly submitted, then the application is deemed as abandoned.

  61. 31.

    Is copyright registration recommended for local packaging and marketing materials?

  62. Local packaging or marketing materials are generally registered as tridimensional designs and not as copyright.

  63. 32.

    What is the duration of copyright protection?

  64. A copyright is valid for all the author’s life and 50 years after the death of the owner in favour of its successors.

  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. No.

  67. 34.

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

  68. No.

  69. 35.

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

  70. The rights of economic exploitation of the collective work unless stipulated otherwise, are presumed assigned to the person who publishes it under his name, without prejudice to the rights of each author on his contribution.

  71. 36.

    What are the criminal sanctions for intellectual property infringements?

  72. Taking into consideration that SENAPI is an administrative authority, said entity can only apply the following administrative measures within an infringement procedure:

    a) the cessation of the acts that constitute the infraction;

    b) compensation for damages;

    c) the withdrawal of the commercial circuits of the products resulting from the infringement, including packaging, packaging, labels, printed or advertising material or other materials, as well as the materials and means that predominantly served to commit the infringement;

    d) the prohibition of the importation or exportation of the products, materials or means referred to in the preceding paragraph;

    e) the adjudication in ownership of the products, materials or means referred to in subparagraph c), in which case the value of the goods shall be imputed to the amount of compensation for damages;

    f) the adoption of the necessary measures to prevent the continuation or recurrence of the infringement, including the destruction of the products, materials or means referred to in subparagraph c) or the temporary or definitive closure of the defendant or defendant's establishment; or

    g) the publication of the condemnatory sentence and its notification to the interested persons, at the expense of the offender.

    Once the administrative stage has concluded, the petitioner, with a final administrative resolution, can file a jurisdictional action in order to obtain an economic compensation.

  73. 37.

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

  74. No.

  75. 38.

    Does your country recognise a right of publicity?

  76. No.

  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. SENAPI has tuition to hold and resolve disputes by conciliation, regarding copyright.

  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. No. Unfortunately, Customs or the Border Control in Bolivia does not have a system where we can record intellectual property rights.

  81. 41.

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

  82. None.

  83. 42.

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

  84. None.

  85. 43.

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

  86. Yes, a licence agreement must be duly legalised with the Bolivian Consulate.

  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. None.

  89. 45.

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

  90. Cybercrime is regulated by the Criminal Code:

    ARTICLE 363 bis.- (COMPUTERIZED HANDLING).- The one with the intention of obtaining an undue benefit for himself or a third party, manipulates a processing or transfer of computer data that leads to an incorrect result or avoids such a process whose result would have been correct, thus causing a transfer of property to the detriment of a third party, will be punished with imprisonment from one to five years and a fine of sixty to two hundred days.

    ARTICLE 363 ter.- (ALTERATION, ACCESS AND UNDUE USE OF DATA

    COMPUTERS).- Whoever is authorised without authorisation, access, use, modify, delete or disable, data stored on a computer or any computer support, causing damage to the owner of the information, will be punished with work for up to one year or fine up to two hundred days.

  91. 46.

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

  92. None.

  93. 47.

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

  94. The Commerce Code states the following:

    Technical bankruptcy

    Term used to describe an entity that is insolvent. It generally indicates that the liabilities of an entity exceed its assets or that it is unable to meet its obligations at the time of expiration.

    The bankruptcy of a company is a judgment, through which the assets of the company are sold, in order to pay the greater amount of their debts. It originates when the company cannot pay its commercial, labour, social security and/or financial obligations; and thus it is declared by a court.

    The bankruptcy can be voluntary or by third parties.

    Bankruptcy causes: 

    Art. 1542.- (CASES) The declaration of the state of bankruptcy of a merchant that has ceased to pay its obligations, must be made at the request of one or several creditors or the debtor himself or, either ex officio by the judge in the cases in which the law so provides.

    Art. 1543.- (OTHER CASES). You can also declare bankruptcy:

    1) To the retired merchant or partner with unlimited liability excluded from the partnership, provided that the request is made before the expiration of one year of such event

    2) To the estate of the deceased merchant when requested by a creditor, up to six months after his or her death, if the cessation of payments occurred during his or her lifetime;

    3) To dissolved companies, up to one year after their dissolution, if the cessation of payments occurred during the time in which they exercised the trade;

    4) To the incapacitated or disabled persons who continue the exploitation of a company;

    5) To brokers, brokers, auctioneers and other authorised merchants; and 

    6) To the foreign commercial companies with main object in the country or branches of foreign companies, in which case the bankruptcy affects all the existing goods in the country.

    Bankruptcy may also be declared at the request of the heirs of the deceased merchant in relation to the estate of the deceased, but this request cannot be attempted within six months of the death.

    Procedures in case of bankruptcy 

    Judicial testimony that contains the judicial resolution that admits the procedure of the reorganisation, in original or photocopy legalised by competent authority.

    In this case, judicial testimony that contains the resolutions of any of the following documents, in original or photocopy legalised by competent authority is a:

    • judicial resolution that ratifies the deliberations of the creditors' meeting containing the minutes of the respective agreement;
    • judicial resolution that concludes the process of the contest; or
    • judicial order declaring the bankruptcy of the merchant.

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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