PERU

• INTERNATIONAL TREATIES TO WHICH PERU IS SIGNATORY

  • International Treaties to which Peru is signatory:

    • Paris Convention for the protection of industrial property
    • Patent Co-operation Treaty – PCT.
    • Agreement on Trade Related Aspects of Intellectual Property Rights –TRIS.
    • Cartagena Agreement pertaining to the Andean Community.
    • Budapest Treaty On The International Recognition of the Deposit of Micro Organisms For The Purposes of Patent Procedure.
• BASICS REGARDING PATENTABILITY OF INVENTIONS IN PERU

  • Inventions may relate to products, processes or industrial applications.  Patents are therefore granted to inventions that:

    • Are New or Novel
    • Involve an inventive step
    • Comprise of a process or an Industrial application of the invention.

    For an Invention to be patentable, it should contain the following:

    (i).  Novelty:   An invention is considered new or novel if it is not included in the state of the art.  State of the art consists of all the information available and accessible to the public prior to the date of the patent application.

    (ii).  Inventive Step:  An invention is said to contain an inventive step if for ‘a man skilled in the art it does not yield results in an obvious way from the state of the art’.

    (iii). Industrial Application:  of the invention would be ‘when the object of the invention may be produced, manufactured or used in any kind of industry including agriculture’.

• INVENTIONS NOT PATENTABLE IN PERU

  • Inventions pertaining to the following:

    • Discoveries, Scientific Theories & Mathematical methods.
    • Aesthetic creations.
    • Schemes, Rules, Methods for performing mental acts, playing games, doing business as well as Presentation of Information.
    • Programmes for Computers.
    • Inventions contrary to public order & morals.
    • Methods of treatment on humans and animals.
    • Plant or Animal varieties or Bio processes for the production of plants or animals.

    PartityPatents Law Firms through its associates in Peru is at hand to help you with patent registration and prosecution.  

• FILING REQUIREMENTS OF PATENTS IN PERU

  • a) The application for a patent grant;

    b) The applicant’s name and address;

    c) The nationality or address of the applicant and, should the applicant be a judicial person, the place of incorporation;

    d) The name of the invention;

    e) The name and address of the inventor, if a person other than the applicant;

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

    g) The signature of the applicant or of the applicant’s legal representative; and,

    h) The date, number, and office of filing of any such application for a patent or other patent protection as may have been filed or obtained abroad by the applicant or assignee in respect of part or all of the same invention claimed in the application being filed in the respective Member Country, if pertinent.

• EXAMINATION OF THE PATENT APPLICATION IN PERU

  • Once the application is filed, the application is scrutinised for defence & atomic energy aspects.

    Examination is also conducted for formality & substantial requirements of the application.

    Further, if the applicant so desires, patents shall be granted without prior examination of the patentability of the inventions. It is pertinent to note that, this kind of examination will neither guarantee the value of the inventions applied for, nor the exactness or accuracy of their description. Such patents are therefore, granted at the applicant’s risk.

• RIGHTS OF THE PATENTEE IN PERU

  • KINDS OF PATENTS GRANTED IN PERU:

    – Patents with a term of 20 yrs.

    – Utility Models with a term of 10 yrs.

    • Patents confer to its holders or his successors an exclusive right to work the invention.
    • Patentee may authorise such uses of the patent through a contractual agreement with interested parties.
    • He may authorise the working of the patent either by a manufacturer or by an importer.
    • Patentee may even assign or licence the patent.
• COMPULSORY LICENCES OF PATENTS IN PERU

  • Upon expiry of 3 yrs. from the date of filing of the petition or 4 yrs. from the date of grant of the petition whichever is longer, the Peruvian Patent office may grant compulsory licences to an interested party for the following reasons:

    • Mainly for the industrial manufacture of the product covered by the patent or, for full use of the patented process, but only if, at the time of the request, the patent had not been exploited in Peru.
    • If the exploitation of the invention had been suspended for more than one year.
    • When, prior to applying for it, the proposed user has made efforts to obtain a contractual license from the patent holder on reasonable commercial terms and conditions and that such efforts were not successful within a reasonable period of time.
    • The licensee shall exploit the licensed invention within a period of two years following the date the license was granted, unless that licensee is able to give valid reasons for inaction otherwise, at the patent owner’s request, the Peruvian national office shall revoke the compulsory license.
    • Following the declaration by Peru in public interest, the existence of an emergency, or national security considerations, and only for so long as those considerations exist, the patent may be subject to compulsory licensing at any time.
    • The Peruvian Patent office shall specify the scope or extent of the compulsory license and, in particular, the term for which it is granted, the subject matter of the license, and the amount of remuneration and the conditions for its payment.
    • The grant of a compulsory license for reasons of public interest shall not reduce the right of the patent owner to continue exploiting it.
    • The Peruvian Patent office may, either ex officio or at the request of a party, and after having obtained the consent of the national antitrust authority, grant compulsory licenses where practices are noted that are detrimental to the exercise of free competition, especially where they constitute an abuse by the patent owner of a dominant position in the market.
    • The Peruvian Patent office shall grant a license, upon request by the owner of a patent whose exploitation necessarily requires the use of another patent, and that right holder has been unable to secure a contractual license to the other patent on reasonable commercial terms. That license shall, without prejudice to be subject to the following conditions:

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

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

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

    In addition compulsory licenses shall be subject to the following:  

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

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

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

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

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

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

    g) they shall be used predominantly for the supply of the domestic market.  It is pertinent to note that Compulsory licenses that fail to comply with the provisions  above, shall be devoid of any legal effect whatsoever.

    ParityPatents along with specialised Patent Lawyers and Patent Attorneys in Peru, can assist you comprehensively with Compulsory Licence matters.       

• PATENTS Cost of Registration in PERU