Business brief 2010: Costa Rica
Effectiveness of the IP framework
While Costa Rica is moving its intellectual property system forward to fulfil its trading agreement commitments and economic self-interest, not all the changes have achieved the expected results.
The Law of Enforcement of Intellectual Property Rights No. 8039 of October 12, 2000 introduces important amendments that provide improved protection to holders of intellectual property rights by the establishment of preliminary injunctions, border measures, administrative procedures, and civil and criminal procedures.
However, as a result of the current economic crisis, the judiciary has been forced to restrict resources to its dependent bodies. From the criminal courts’ perspective, the shortage of resources limits the possibilities of dealing immediately with intellectual property infringement cases because the Attorney General is responsible for prosecuting other types of crime and cannot devote attention exclusively to pursuing IP matters.
Thus, public prosecutors are forced to prioritise and, inevitably, intellectual property infringements come in last.
As for civil courts, the fight against judicial delays is far from over, which severely affects the effectiveness of these actions.
Additional improvements
We submit that government authorities should analyse the cost benefit to Costa Rica. If the state devotes greater resources to the effective enforcement of intellectual property rights, there will be greater investment by companies and, subsequently, greater social and economic benefits to the country.
As of today, the most vulnerable goods are software, compact discs, DVDs and so forth. Most cases are related to copyright infringement. Counterfeit goods tend to be imported; however, there are businesses within Costa Rica that have been identified as producing counterfeited goods. This confirms that in addition to reforming the laws in Costa Rica, social and cultural changes are required.
Although there is an institutional awareness that changes need to be made not only quickly but efficiently, the efforts up until now have not been enough. It is true that seminars and workshops are being conducted to raise the awareness of officials and the community in general concerning the importance of protecting intellectual property rights. An Inter-institutional Liaison Committee for the Protection of Intellectual Property comprised of national public institutions has also been set up to identify the weaknesses and strengths of the existing intellectual property legislation. Nonetheless, greater efforts are required.
For example, a proposal to create a Specialized Office of Intellectual Property within the Attorney General’s Office should be given thought. This would allow the state to achieve greater efficiency and effectiveness, including co-ordination with other public and private bodies facilitating the enforcement of the criminal prosecution policy, as well as determining the strengths and weaknesses in investigations of these types of crimes.
Key actions to protect IP
Faced with the above and taking into consideration that Costa Rica follows the attributive system— meaning that the exclusive right of use is granted through registration with the exception of well-known trademarks, trade secrets and copyrights—and regardless of the prohibitively high official fees in the case of patents, there are good reasons for you to pursue protection in Costa Rica.
Specifically worthy of mention is that while a copyright is owned by the author and is protected as soon as it is created, it is highly desirable (but not mandatory) to register this property before the Copyright Office. Prompt filing of a copyright registration application at the Copyright Office enables the author to establish a public record of his claim and establishes a presumption that the copyright is valid.
Furthermore, Article 16 of the Law of Enforcement of Intellectual Property Rights allows customs authorities to disrupt the distribution of goods if sufficient motives exist to consider that an IP right is being infringed and/or may cause confusion to the public consumer. Therefore, it is advisable to work with customs to educate it and even provide it with a manual that will help it to identify counterfeit goods.
Managing IP
In a broader sense, IP owners should conduct an audit of their intellectual assets to assess which property forms are likely to be the best and most cost-effective forms of protection consistent with their business plans in Costa Rica. You can conduct a preliminary audit of your IP, but professional assistance from local counsel is beneficial in identifying and appraising these assets in terms of the local market and IP legal framework.
Once an audit is performed, the various properties can be protected based on your commercial priorities and objectives. For example, considerations should include plans to increase marketing and sales, expand revenue through licensing or franchising, build or promote value through corporate identity or brand prestige and/or use the portfolio as security or warranty in financial transactions.
Similarly, it may be possible to consolidate protection or abandon IP that is obsolete in order to reduce maintenance costs or the costs of undertaking unnecessary judicial actions. The costs of enforcement, as well as the availability of damages and penalties, also should inform your consideration of the form of protection.
A cohesive and efficient IP programme in Costa Rica will include a simple four-part strategy to maximise IP value and minimise risks that should be part of your planning:
