Business brief 2012: Costa Rica

Patents

How do you register or secure patent rights, and is national or international coverage most appropriate?

Patent applications should be filed before the competent authority shortly after the invention becomes known to others, since protection will not be granted if, more than a year before the patent application is filed, the invention has been disclosed or made available to the public anywhere in the world and by any means. Costa Rica is a member of several conventions and treaties that enable a local patent application to be adjustable for filing in other countries.

What are the costs of obtaining and defending a patent?

The legal fees to prepare and file a patent application run from $1,200 to $2,000, including the patent office’s fee. Paying the final issue fee, including the patent office’s fee, will cost approximately $650. To the latter, you should add the fee for an expert, who conducts the substantive examination. That costs between $350 and $525. An opposition to your application will increase the fees.

Where can you find information on existing patents in your jurisdiction?

Searches for existing patents can be conducted at the database of the patent office, with the complete title of the invention, the name of the owner or a Patent Cooperation Treaty (PCT) number, for example. If a more precise search is required, it is possible to ask the patent office to provide the information.

Is there anything unusual about the patent law that companies should be aware of?

A key problem is lack of knowledge of what is excluded from patentability. For example, inventions whose commercial exploitation would have an impact on public order, morals, health or life of people or animals, or would preserve vegetables or avoid important damage to the environment, are excluded from patentability. Diagnostic, therapeutic and surgical methods for the treatment of people or animals are also excluded.

What are the key threats to patent owners, and what is the best strategy if you suspect someone is infringing your patent?

If a third party is using someone else’s invention, this should be brought to the attention of an IP attorney. If the use of the product or process is sheltered by an enforced patent, it should be considered to serve notice of a cease and desist letter. If the use continues, the owner is entitled to bring a civil action for patent infringement, seeking injunction against further use and seeking damages and attorney’s fees.

Trademarks

How do you register or secure trademark rights, and what protection do they grant?

By means of a simple application procedure, registration of a trademark can be granted after six months if no actions are raised against it. Trademarks are registered on a 10-year basis with the possibility to renew for another 10 years. Commercial names are valid while the business is operating. Trademark rights confer the right to impede third parties from using identical and/or similar marks.

What are the costs of registering and defending a trademark?

The cost of applying and obtaining registration runs from $400 to $600, including legal fees, plus publication and official fees. If the application faces objections or oppositions, legal fees will range from $500 to $600. If supporting evidence is filed, translation and legalisation expenses should be considered as well.

What are the key threats to trademark owners and what is the best strategy for dealing with infringement?

The key threat to trademark owners is counterfeiting. According to DR-CAFTA provisions and Costa Rica IP legislation, the authorities can act ex officio and are empowered to seize suspected infringing merchandise, without the need for a formal complaint from a private party or right holder. Nevertheless, such seizure cannot last for more than 10 business days, unless a judicial action is brought against the infringer.

What are the most common mistakes trademark owners make?

A common mistake is not clearing the mark with an IP attorney before applying for registration and/ or launching it in the market. Companies should always make an effort to develop strong marks from the earliest stages of their enterprise’s development. Weak marks can be difficult to protect and enforce.

Copyright

What are the key challenges to copyright holders in your jurisdiction?

Large numbers of copyrightable works are copied by competitors in today’s exceedingly aggressive market. Counterfeit goods tend to be imported but there are businesses within Costa Rica that have been identified as producing counterfeit goods.

How should people ensure they are protected against copyright infringement?

Under the Copyright Law, a work is automatically protected by copyright when it is created. Neither registration in the copyright office nor publication is required for copyright protection under the present law. However, 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.

What is the best way to deal with infringement, and what are the costs associated with it?

Copyright owners can take action to enforce their IP rights in criminal courts and civil courts to seek injunction of continued sales, damages, fixed damages and attorney’s fees. In most cases, litigation against infringers varies in time frame and so attorney’s fees will vary.

Counterfeiting

How big a problem is counterfeiting in your jurisdiction?

IP crime is non-conventional, because it has characteristics of economic crime, white collar crime and international organised crime. Counterfeiting is a major issue in Costa Rica and is one of the main concerns for IP owners.

What industries are particularly at threat?

The largest issues remain in toys, designer/sports clothes/shoes, drinks and alcohol, music, films and computer software and cosmetics. However, brand name drugs and car parts are also subject to this problem.

What are the best strategies for dealing with the problem?

IP rights owners should monitor and oversee the activities of their local operations, and the competition, to avoid infringement of their IP rights. Furthermore, given the potential for financial damage, it is vital to establish a well organised IP enforcement policy so that in the event of any infringement, there is a fixed standard of how to exercise the owner’s rights.

General

What legislative changes to the IP regime would make life easier for businesses?

There is a bill to be submitted to Congress which will enable the registration of trademarks and authorised distributors with customs. The idea is to give customs officials the ability to seize suspected counterfeit goods without instruction from the police or their owners. The IP owner will register a representative with customs, who will then be contacted if any infringement occurs.

With the changing philosophy of the attorney general’s office, prosecutorial discretion is an institution that will become obsolete for IP crimes. So, such wrongful actions should soon be prosecuted on a permanent basis.