Business brief 2011: Costa Rica

Patents

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

A patent attorney should be consulted regarding the filing of a patent application locally and in foreign countries.

Patents are available for any inventions, whether processes or products, in all fields of technology, provided that they are new, involve an inventive step and are capable of industrial application.

It is often desirable before filing a patent application to conduct a pre-filing search with the patent office. Patent applications should be filed 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.

An issued Costa Rican patent grants protection in Costa Rica only. However, it is desirable to obtain protection in other countries that may be of commercial interest to the inventor or to his company. 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 for obtaining a patent, and what are the costs of defending it?

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 $650 approximately. 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.

Regardless of the fact that patents are more difficult and costly to obtain than trademarks and copyright, a patent can give a competitive edge for many years. Inventions involve time, expense and considerable effort, and unless protected by a patent, the invention will be in the public domain and freely available to competitors.

Where can you find information on existing patents in your jurisdiction (i.e. online database, patent office request, etc.)?

Searches can only be conducted if you hold the complete title of the invention or the name of the owner. It is not possible to conduct searches using key words that will disclose the content of a given patent application. We all know that the title of a patent does not necessarily reveal or refer to its content.

Is there anything unusual about the patent law that companies should be aware of, e.g. what are the most common mistakes businesses make?

A key problem is a lack of knowledge of what is excluded from patentability. This may result in rejection. Article 1, Section 4, stipulates that 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 damages to the environment, are excluded from patentability.

In the same article, Section 4 excludes from patentability diagnostic, therapeutic and surgical methods for the treatment of people or animals.

Also, the article excludes plants and animals, except micro-organisms, as long as the microorganism is not as it is in nature, and essentially biological procedures for the production of plants and animals.

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

If you discover that a third party is using your invention, this should be brought to the attention of your IP attorney. If the use of the product or process is covered by your patent and infringes your rights, you should consider sending a cease and desist letter. If the use persists, then you are entitled to file 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 does it grant?

Before applying for registration of a trademark, the applicant should conduct a trademark search to identify prior third-party rights. Also an IP attorney should tell you if the mark is inherently unregistrable.

What are the costs for registering a trademark, and what are the costs of defending it?

Trademark registrations grant the owner valuable procedural and substantive rights.

The cost for applying and obtaining registration runs from $400 to $600, including legal fees, plus publication and official fees. If the application encounters 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 (counterfeiting, passing-off, online infringement, etc.), and what is the best strategy for dealing with infringement?

The key threat to trademark owners is counterfeiting. These goods tend to be imported; however, workshops have been identified in Costa Rica that produce them as well.

Article 16 of the Law of Enforcement of Intellectual Property Rights allows the customs authorities to disrupt the distribution of goods if there is sufficient evidence to consider that an IP right is being infringed and/or may cause confusion to the consumer. Therefore, it is advisable to work with customs to educate the authority, and even provide it with a manual that will help to identify counterfeit goods.

Once you are aware of an infringement, cease and desist letters are very effective. If there is no compliance by the infringer, the next option is to begin a judicial proceeding. Rights holders could take action to enforce their IP rights in criminal courts and civil courts.

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 constantly being copied by competitors in today’s exceedingly aggressive market.

Counterfeit goods tend to be imported; however, there are businesses within Costa Rica that have been identified as producing counterfeited goods.

How should people ensure they are protected against copyright infringement?

Under the present Copyright Law No. 6683, 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, 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 with 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.

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

If the copyright holder becomes aware of an infringement of copyright, this should be brought to the attention of an IP attorney. The work should be substantially similar in design, structure or content, to the degree that it can be said that the work was copied or adapted from the original, rather than simply a similar idea or concept. If there is possible infringement, the first step is to send a cease and desist letter to the infringer.

Copyright owners could take action to enforce their IP rights in criminal courts and civil courts to seek injunction of continued sales, damages, fixed damages as well as attorney’s fees.

Counterfeiting

How big a problem is counterfeiting in your jurisdiction?

It is a serious problem. The Law of Enforcement of Intellectual Property Rights introduces important dispositions to bring protection to holders of intellectual property rights by the establishment of precautionary measures, border measures, administrative procedures, and civil and criminal procedures.

Nevertheless, the legislation has not achieved the expected results. Unfortunately, citizens do not respect IP rights, and bigger cultural and social changes are required to build the necessary awareness.

What industries are particularly at threat?

The most vulnerable goods are software, compact discs, DVDs, clothes and handbags. Most cases are related to copyright infringement.

What are the best strategies for dealing with the problem?

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.

You should monitor and oversee the activities of your local operations, and the competition, to avoid infringing their intellectual property rights.

Given the potential for financial damage, loss of clientele and reputation, it is vital to establish an intellectual property enforcement policy so that in the event of infringement or other violations, you have guidelines for when and how you will exercise your rights.

General

Are there any legislative changes to the IP regime that would make businesses’ life easier?

Bill 17831 aims to ensure and protect the rights of life, health and human dignity by regulating the commercialisation of fraudulent medicines, food, and biomedical equipment and material. This bill will modify various laws, but in particular, it is important to note that it modifies Articles 44 and 45 of the Law of Enforcement Proceedings of Intellectual Property Rights, imposing further consequences on the infringement of IP rights.

It is now being reviewed by the Costa Rican Congress’s Commission on Social Matters.

María del Pilar López is a senior lawyer and director of the intellectual property department of Zürcher Lawyers. She can be contacted at: plopez@zurcherip.com