Tips on filing national phase PCT applications

03-10-2016

Gino Piaggio

Before filing a Patent Cooperation Treaty (PCT) application into the national phase in Peru, it is important to know that Peruvian patent law grants patents only for goods or processes, but not their uses. According to article 14 of Decision No. 486 of the Andean Community, which governs the law in Peru: “Patents shall be granted for inventions, whether goods or processes, if they are new, involve an inventive step and are industrially applicable.”

Consequently, second uses are not patentable, as clearly stated in article 21 of Decision No. 486: “Goods or processes already patented and included in the state of the art may not be the subject of new patents on the sole ground of having been put to a use different from that originally contemplated in the initial patent.”

Other items that are not patentable in Peru are established in articles 15 and 20 of Decision No. 486. Among them are discoveries; scientific theories; mathematical methods; any living thing, either complete or partial, as found in nature; natural biological processes; biological material existing in nature or that can be isolated; genome or germplasm of any living thing; literary and artistic works or any other aesthetic creation protected solely by copyright; plans, rules and methods for the pursuit of intellectual activities; games; economic and business activities; software; methods for presenting information; diagnostic, therapeutic and surgical methods for the treatment of humans or animals; inventions that may affect public order or morality; inventions that may affect the environment; etc.  

"the applicant can amend the PCT application’s specification, but these amendments cannot involve extending the scope of protection beyond the use indicated in the national phase patent application when filed."

With the above in mind, a PCT application must enter the national phase in Peru within 30 months of the filing of the oldest priority claim. The PCT specification, comprising the description, the claims, the abstract and the drawings must be filed in Spanish, as well as the amendments, if any. Together with the Spanish translation of the PCT specification, a national phase patent application form stating the name and address of the applicant, as well as the name, address and nationality of the inventor(s), must be filed.

A power of attorney signed by an authorised officer of the applicant and an assignment document signed by the inventor(s) are also necessary. Neither notarisation nor apostille are required in the case of the power of attorney, but both are a must in the case of the assignment document. However, instead of filing a notarised and apostilled assignment document, an affidavit stating the labour relationship between the applicant and the inventor(s) at the time the invention was being developed will suffice to meet the Peruvian Patent Office’s requirements. The power of attorney and assignment document (or affidavit) can both be filed two months after the PCT application has been filed before the Peruvian Patent Office.

Examination

Once the national phase patent application is published in the Official Gazette, if no oppositions have been raised by third parties, it is examined by the Peruvian Patent Office. If objections are raised during the examination, the applicant can amend the PCT application’s specification, but these amendments cannot involve extending the scope of protection beyond the use indicated in the national phase patent application when filed, as stated in article 34 of Decision No. 486.

Article 34 says: “The applicant for a patent may, at any time during the proceeding, request the modification of the PCT specification, but that modification may not involve extending the scope of protection beyond the use indicated in the initial national phase patent application. The applicant may, likewise, request the correction of any material error.”

If the first instance resolution of the Peruvian Patent Office is unfavourable, the applicant can file a reconsideration brief or an appeal brief against the resolution in accordance with articles 131 and 132 of Peruvian Legislative Decree No. 1075. However, the PCT application’s specification can no longer be amended.

Finally, if the second instance resolution of the Peruvian Patent Office is unfavourable, the applicant can challenge the resolution before the Superior Court of Justice of Peru in accordance with article 4 of Peruvian Law No. 27584.

Gino Piaggio is an IP attorney at law at Valencia Law Office. He can be contacted at: valencia@valencialawoff.com.pe

Gino Piaggio, Valencia Law Office, Patent Cooperation Treaty, application, patent, Peruvian Patent Office,

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