- TABLE OF CONTENTS
- CHAPTER I PATENTS
- Section I Patentability Requirements
- Section II Owners of Patents
- Section III Patent Applications
- Section IV Processing of the Application
- Section V Rights Conferred by the Patent
- Section VI Obligations on the Owner of the Patent
- Section VII Licensing
- Section VIII Legal Protection of the Patent
- Section IX Invalidation of the Patent
- Section X Lapse of the Patent
- CHAPTER II UTILITY MODELS
- CHAPTER III INDUSTRIAL DESIGNS
- CHAPTER IV INDUSTRIAL SECRETS
- CHAPTER V MARKS
- Section I Requirements for the Registration of Marks
- Section II Registration Procedure
- Section III Rights Conferred by Registration
- Section IV Cancellation of Registration
- Section V Invalidation of Registration
- Section VI Lapse of Registration
- Section VII Licensing and Transfer of Marks
- Section VIII Advertising Slogans
- Section IX Collective Marks
- CHAPTER VI TRADE NAMES
- CHAPTER VII APPELLATIONS OF ORIGIN
- CHAPTER VIII COMPLEMENTARY PROVISIONS
- FINAL PROVISION
- TRANSITIONAL PROVISIONS
SUBREGIONAL INTEGRATION AGREEMENT (CARTAGENA AGREEMENT)
Decision No. 344—Common Provisions on Industrial Property*
Chapter I: Section I: Section II: Section III: Section IV: Section V: Section VI: Section VII: Section VIII: Section IX: Section X: Chapter II: Chapter III: Chapter IV: Chapter V: Section I: Section II: Section III: Section IV: Section V: Section VI: Section VII: Section VIII: Section IX: Chapter VI: Chapter VII: Chapter VIII: Final Provision
Articles
Patents Patentability Requirements ........................................... 1- 7 Owners of Patents ......................................................... 8-11 Patent Applications ....................................................... 12 -20 Processing of the Application ....................................... 21-33 Rights Conferred by the Patent ..................................... 34-36 Obligations on the Owner of the Patent ........................ 37-39 Licensing....................................................................... 40-50 Legal Protection of the Patent ....................................... 51 Invalidation of the Patent .............................................. 52 Lapse of the Patent........................................................ 53 Utility Models ............................................................... 54-57 Industrial Designs ......................................................... 58-71 Industrial Secrets........................................................... 72-80 Marks Requirements for the Registration of Marks ................. 81-86 Registration Procedure.................................................. 87-101 Rights Conferred by Registration.................................. 102-107 Cancellation of Registration.......................................... 108-112 Invalidation of Registration........................................... 113 Lapse of Registration .................................................... 114 Licensing and Transfer of Marks .................................. 115-117 Advertising Slogans ...................................................... 118-122 Collective Marks........................................................... 123-127 Trade Names ................................................................. 128 Appellations of Origin................................................... 129-142 Complementary Provisions ........................................... 143-147
...................................................................................... 1
Transitional Provisions ...................................................................................... 1-2
CHAPTER I PATENTS
1. The Member Countries shall grant patents for inventions in all areas of technology, whether goods or processes, that are new, involve an inventive step and are industrially applicable.
2. An invention is new when it is not included in the state of the art.
The state of the art comprises everything that has been made available to the public by written or oral description, by use or by any other means prior to the filing date of the patent application or, where appropriate, of the priority claimed.
Solely for the purpose of determining novelty, the contents of a patent application pending before the competent national office and having a filing date or priority date earlier than the priority date of the patent application under examination shall likewise be considered part of the state of the art, provided that the said contents are published.
3. For the purposes of determining patentability, no account shall be taken of any disclosure of the contents of the patent during the year prior to the filing date of the application in the country, or during the year before the priority date if priority has been claimed, provided that such disclosure is attributable to:
(a) the inventor or his successor in title; 6. The following shall not be considered inventions: 8. The right to the patent shall belong to the inventor or to his successor in title.
The owners of patents may be natural persons or legal entities.
If two or more persons have made an invention jointly, the right shall be jointly held by both or all of them.
If two or more persons make the same invention independently of each other, the patent shall be granted to the person, or to the successor in title, who files the first application in respect of it or claims the earliest priority.
9. Where a patent application relates to an invention that has been unlawfully obtained from the inventor or from his successors in title, or where, by virtue of contractual or legal obligations, the owner of the patent has to be a person other than the applicant, any person having a legitimate interest may, up to three years following the grant of the patent, claim the status of true owner before the competent judicial authority.
10. Without prejudice to the provisions of the national legislation of each Member
Country, in the case of inventions occurring in the course of employment relations, the State employer, whatever its form and nature, may transfer part of the economic benefit deriving from the innovations to the employee inventors with a view to promoting research activity, as provided in the laws of the country concerned.
Entities that receive State funding for their research shall reinvest part of the royalties received from the marketing of inventions, with a view to accumulating a continuous supply of research funds and stimulating researchers by giving them a share in the proceeds from innovations, in accordance with the legislation of each Member Country.
11. The inventor shall have the right to be mentioned as such in the patent, and may likewise object to being so mentioned.
Failure to comply with any of the requirements specified in this Article shall cause the
competent national office to regard the application as not having been accepted for processing, and no filing date shall be assigned to it.
14. The following shall accompany the application at the time of filing:
(a) whatever powers of attorney are necessary; Every divisional application shall be accorded the same filing date as the original application in any Member Country.
Division of the application by the applicant shall take place prior to publication, and at any stage in the proceedings at the request of the competent national office.
Where division is requested or a division proposal is accepted, the requisite documents shall be filed and the procedure corresponding to the new type of right shall be observed.
27. On expiration of the periods specified in Articles 25 or 26, as the case may be, the
competent national office shall proceed to examine whether or not the subject matter of the application is patentable.
If, in the course of the substantive examination, it is found that there is a liability of total or partial violation of the acquired rights of third parties, or that additional or complementary particulars or documents are required, the applicant shall be called upon in writing to present, within a maximum period of three months following the notification, those arguments and clarifications that he considers relevant, or to file the required information or documents. If the applicant fails to comply with the requirement within the period allowed, his application shall be considered abandoned. The owner may not exercise that right in any of the following cases:
(a) when the case concerns the importation of the patented product that has been
marketed in any country with the consent of the owner, a licensee or any other authorized person;
(b) where the use takes place in a private circle and on a non-commercial scale;
(c) where the use is made at an experimental, academic or scientific level and for non-profit-making purposes.
36. The rights conferred by a patent may not be asserted against a third party who, in good faith and before the priority date or the filing date of the application on which the patent was granted, was already using the invention in a private circle, or had made real or effective preparations for such use.
In such a case, the said third party shall have the right to start or continue, within any Member Country, the manufacture of the product or use of the process, as the case may be, but that right may only be assigned or transferred together with the establishment or business in which the manufacture or use was taking place.
This obligation shall be met by the patentee or his successors in title, assignees, licensees or any other person who holds a right deriving from the patent.
40. The patentee may license another person to work the patent, but only by written contract.
License agreements shall be registered with the competent national office, failing which they shall not be binding on third parties.
41. The competent national office shall not register license agreements for the working
of patents that do not conform to the provisions of the Common System for the Treatment of Foreign Capital and for Trademarks, Patents, Licenses and Royalties.
42. On expiration of a period of three years following the grant of the patent, or four years following the application for the patent, whichever is the longer, the competent national office may grant a compulsory license for the industrial manufacture of the product to which the patent relates, or for the full use of the patented process, at the request of any interested party who has failed to secure a contractual license on reasonable terms, but only if, at the time of the request, the patent has not been worked in the manner specified in Articles 37 and 38 of this Decision in the Member Country in which the license is sought, or if exploitation of the invention has been suspended for more than one year.
A compulsory license shall not be granted if the owner of the patent provides legitimate justification of his failure to act, which may be reasons of force majeure, in accordance with the domestic provisions of each Member Country.
The compulsory licensee shall pay appropriate compensation to the owner of the patent.
Any person who applies for a compulsory license shall prove that he has the technical and economic capability to carry out the industrial manufacture of the product to which the patent relates or the full use of the patented process.
43. The decision on the grant of compulsory licenses referred to in the foregoing Article shall be taken after the owner of the patent has been notified, so that, within 60 working days following the said decision, he may, if he sees fit, present his arguments.
The said grant decision shall specify the scope or extent of the license, and in particular shall specify the period for which it is granted, the subject matter of the license, the amount of the royalties and the conditions for the payment thereof.
The competent national office shall determine the amount of the consideration, after hearing the parties, in relation to the scale of the exploitation of the licensed invention and the cooperation that the patentee may have obtained to facilitate the said exploitation especially in terms of the provision of the necessary technical skills and whatever other conditions the office considers relevant thereto.
A complaint shall not prevent working or have any effect on periods that may be running. The making of a complaint shall not prevent the owner of the patent from collecting, among other things, the royalties specified by the office in respect of the part unaffected by the said complaint.
44. At the request of the owner of the patent or his licensee, the licensing conditions may be altered by the body that approved them, after the parties have been heard, where new circumstances dictate and in particular where the owner of the patent grants another license on terms more favorable than those previously granted.
45. The licensee shall be bound to exploit the licensed invention, which, unless the
licensee justifies his inaction with legitimate reasons, shall occur within a period of two years following the date of grant of the license, failing which the license shall be revoked.
46. Following a declaration by the Government of the Member Country concerned regarding the existence of public interest, emergency or national security considerations, and only for as long as those considerations obtain, the said Government may make the patent subject to compulsory licensing at any time, in which case the competent national office may grant such licenses as are applied for. The owner of the patent so licensed shall be notified where reasonably possible.
The decision to grant a compulsory license shall specify the scope or extent of the license, and in particular the term for which it is granted, the subject matter of the license and the amount of royalties and the conditions for the payment thereof, without prejudice to the provisions of Article 49 of this Decision.
In the cases provided for in this Article, licenses may be granted for working according to the provisions ofArticles 37 and 38 of this Decision.
The grant of a compulsory license for reasons of public interest shall not diminish the right of the owner of the patent to continue to work the said patent. 49. Compulsory licenses shall be subject to the following:
(a) the compulsory license shall not be exclusive and may not be transferred or
sublicensed except with the part of the enterprise within which it is exploited and with the consent of the owner of the patent; it shall be evidenced in writing and registered with the competent national office; 50. Except as provided in Article 40, licenses that do not conform to the provisions of this Section shall be devoid of legal effect.
Without prejudice to the provisions of this Section, the procedure for the grant of compulsory licenses shall be that laid down in the domestic legislation of the Member Countries.
51. The owner of the patent or the person who considers himself entitled to a patent by virtue of this Decision may institute any actions claiming ownership or indemnification that are available to him under the national legislation of the Member Country concerned.
Without prejudice to any other action that may be available to him, the owner of the patent may, after the patent has been granted, bring action for damages against any person who, without his consent, has exploited the patented process or product, where such exploitation took place after the publication date of the patent application.
In cases of alleged infringement of a patent relating to a process for the manufacture of a product, the defendant shall be responsible for proving that the process used by him to manufacture the product is different from that protected by the patent allegedly infringed. To that end it shall be assumed, in the absence of proof to the contrary, that any identical product manufactured without the consent of the owner of the patent has been manufactured by means of the patented process if:
(a) the product manufactured by means of the patented process is new;
(b) there is a reasonable likelihood that the identical product was manufactured by means of the process, and the owner of the process patent is not able to establish, after reasonable effort, what process actually was used.
In the submission of proof to the contrary, due account shall be taken of the legitimate interests of the defendant with respect to the protection of his trade and manufacturing secrets.
52. The competent national authority may, either ex officio or at the request of a party, declare the patent null and void, after the parties concerned have been heard, where:
(a) it has been granted in contravention of any of the provisions of this Decision;
(b) it has been granted on the basis of false or inaccurate particulars contained in the application which are essential.
Invalidation actions under this Article may be brought at any time.
Where the grounds specified above are applicable only to some of the claims or some parts of a claim, invalidation shall be pronounced only in respect of those claims or those parts of the said claim, as the case may be.
The patent, claim or part of a claim that has been invalidated shall be deemed null and void as from the filing date of the patent application.
53. In order to keep the patent in force or maintain a pending patent application, as the case may be, periodical fees shall be paid as provided by the competent national office.
Before the patent is declared lapsed, the Member Countries shall allow the person concerned a period of six months within which to effect payment of the fees referred to in the foregoing paragraph. The patent or pending application shall remain in full force during the periods referred to.
CHAPTER II UTILITY MODELS The following shall likewise not be considered utility models: sculptures, works of architecture, painting, engraving or stamping, or any other subject matter of purely aesthetic character.
56. (of October 21, 1993)
Section I Patentability Requirements
Section II Owners of Patents
Section III Patent Applications
Section IV Processing of the Application
Section V Rights Conferred by the Patent
Section VI Obligations on the Owner of the Patent
Section VII Licensing
Section VIII Legal Protection of the Patent
Section IX Invalidation of the Patent
Section X Lapse of the Patent