Filing Patents in Latin America

IP Pro Life Sciences

As Latin America increases its presence on the global stage, Evelyn
Paredes of MultiLing discusses the key points in the various countries that
businesses need to know before filing a patent

Global enterprises—both in and outside of the life sciences sector—are increasingly looking to grow their business in Latin America, resulting in a stronger economy across much of the region. This growing economy, in turn, makes the region even more attractive for foreign investment. Foreign confidence in the region is evident in the noticeable increase in patent protection in several Latin American countries.

According to the World Intellectual Property Organization’s (WIPO) most recent statistics released in June, an overall 2.7 percent increase in patents filed in Latin America was led by Mexico with a 9 percent increase from 2011 to 2012 or 15,314 patents filed.
Colombia saw a 5.5 percent increase over 2011, and Guatemala realised a 3.9 percent
increase. While Brazil showed a slight decrease in the number of patents filed, it still
led all Latin American countries with 30,435 patents filed in 2012.

While these numbers are miniscule compared to those in China, Japan and the US, it is a more dramatic increase percentagewise than many countries are seeing. This is likely due to the continued development of more mature IP laws in each country, as well as international treaties such as the Pacific Alliance, with the aim of advancing free trade and economic integration among the member states of Peru, Chile, Colombia and Mexico—as well as other foreign countries.

Life sciences companies new to doing business in Latin America—and new to filing for
patent protection in hopes of the broadest amount of coverage being provided unopposed—should consider the following unique challenges before taking the first steps:
Patent laws and processes
IP rights in Latin America—whether under patents, trademarks or copyrights—must
generally be obtained on a country-by-country basis. While most countries belong to the
Patent Cooperation Treaty (PCT), allowing a unified procedure for filing patent applications
in each contracting state, countries such as Argentina, Uruguay, Venezuela, Bolivia
and Paraguay do not.

In any case, to obtain patent protection, inventors must file a patent application in
each country where protection is sought. The majority of Latin American countries,
including Brazil and Colombia, require “absolute novelty”, meaning that if the invention
has been revealed publicly prior to filing in the country, patent rights may be lost. As
a result, a patent application in one country can destroy the novelty of the invention
needed for subsequent patenting in other countries. Therefore, investors must plan to
file for patent protection in Latin America as early as possible.

Below are specific laws and terms for some of the most popular Latin American countries
for foreign investment and patent protection, as well as translation issues to consider
when filing:

Brazil
• Civil law country.
• Applications must be filed in Portuguese.
• First to file, which provides for a 12-month grace period for disclosure of an invention.
• Items not patentable include discoveries relating to or resulting from living organisms, including germplasm and all things occurring in nature; surgical or medical techniques; and discoveries based purely upon natural laws or items occurring in nature.
• Patent terms are 20 years for invention patents and 15 years for utility model patents, calculated from the filling date. In Brazil, the average time to prosecute a patent is about five years.
• Member of the Paris Convention: yes.
• Member of the PCT: yes.
• Brazilian Patent Office: Instituto Nacional de Propiedad Intelectual (INPI). Colombia
• Civil law country.
• Applications must be filed in Spanish.
• Patent terms are 20 years for invention patents and 10 years for utility model patents, calculated from the filing date. The processing time is about three to four years.
• Member of the Paris Convention: yes.
• Member of the PCT: yes.
• Colombian Patent Office: Dirección Nacional de Derechos de Autor (DNDA). Guatemala
• Civil law country.
• Applications must be filed in Spanish.
• New patent regulations include the need for powers of attorney to be supralegalised,
recorded with the Supreme Court and on file with the patent office within four months of filing the application. In addition, at filing, all units must be in the metric system. Failure to comply with these provisions will result in automatic abandonment of the application.
• Patent terms are 20 years for invention patents and 15 years for utility models.
• Member of the Paris Convention: yes.
• Member of the PCT: yes.
• Guatemalan Patent Office: Registro de la Propiedad Intelectual (RPI).

Mexico
• Civil Law country.
• Patent must be filed in Spanish, but any other language is acceptable to obtain a filing date. The deadline to file the translation into Spanish is 60 days following the date of filing.
• First to file.
• Patent terms are 20 years for invention patents and 10 years for utility model patents (from the filling date). The processing patent time is about three to five years.
• Member of the Paris Convention: yes
• Member of the PCT: yes.
• Mexican Patent Office: Instituto Mexicano de Propiedad Intelectual (IMPI).

Translation issues
With Latin America’s economy growing faster than ever before and an ever increasing
number of foreign patent filers seeking to protect their IP in various countries there,
one question looms large: is the translation business in Latin America really prepared
to handle the increasing demand for legal translations in the region—and beyond?

When most people think about the region, they think primarily about the Spanish language.
In fact, Latin America is neither culturally or linguistically homogeneous. While 60 percent of the total population of Latin America speaks Spanish, about 30 percent speak Portuguese and another 6 percent speak other languages such as Quechua, Guaraní, Aymara and Mayan.

Moreover, each country may have different local dialects, as well as rich cultures
and radically different laws based on these cultures. As a result, translating legal documents
requires much more than precision and technical expertise in the legal texts
of the countries involved. It also requires a thorough understanding of each country’s
laws, dialect and local cultures. With the local cultures often dictating the legal systems
and concepts, legal translations formats and styles of documents—as well as
various terminology—can vary considerably from country to country. This means that
especially for patents, translators should be in-country native linguists, scientists, engineers
and legal specialists.

In addition, as more global companies look to do business abroad, they should find translation
service providers who have these expertise in the languages of the countries in which they want to do business—Chinese, Japanese, Korean, German, English, Italian, etc—as well as their Latin American language.

When looking to translate their patent applications and other legal documents for filing in Latin American countries, enterprises also need to consider the following:

Legal translators should be trained in both common law and civil law systems: while nearly all Latin American countries have different laws, most Latin American jurisdictions have a legal system based in civil law. For the countries that are ruled by civil law, legislation represents the primary legal basis. The courts of law base their sentences on the provisions of the legal codes. Meanwhile, past cases are the main source of law and the basis for creating rules of conduct in the common law system.

Certified or notarised translations? When it comes to legal translations, we can generally identify two types in Latin America: certified and notarised translations. Requirements for certified translations can vary by the country where the document is required and by the purpose of the translation. Translators certify their work—with their own seal or stamp- to be accurate according to their best ability. Most Latin American countries have an official system of certified translations, requiring documents for official use be translated by an authorised legal translator. Notarised translations, on the other hand, must be brought to a lawyer or notary public for a seal verifying their accuracy.

As the economy in Latin America continues to grow, the need for qualified legal translation
service providers will grow as well. Knowing how to navigate the languages, as well as the
myriad legal processes in Latin America, will be critical for your success. IPPro

 

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