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Costa Rica PCT National Stage Filing Guide

Updated as of August, 2015

This is a filing guide that contains general information on entering the national phase with Costa Rica as a designated office for an international patent application filed under the Patent Cooperation Treaty (“PCT”).

This document is meant as information of a general nature for our clients and prospective clients as to what entails and can be expected when seeking patent protection in Costa Rica. While we do our best to keep this guide updated, this is not always possible. Some information does differ from WIPO’s PCT Applicant’s Guide – Costa Rica National Chapter. This is often the result of changes in interpretation of rules and recent decisions. Requirements before the Costa Rican Industrial Property Registry are always changing without prior notice. This information is not comprehensive and must not be considered legal advice, but does reflect our understanding of current office practice.

General Information

Competent Authority: Industrial Property Registry, Patent Section
What is language of filing? Spanish only
Foreign applicants: Required to appoint local lawyer
What are the different types of patents allowed? Patent of Invention, utility models and industrial designs/models.
Is electronic filing available? No. All filings are made directly at the Registry, which makes it imperative to have instructions with sufficient prior notice.

National Phase

What is the time period for entering the national phase? 31 months from the priority date
Is there any extension of time allowed for entering the national phase (yes/no)? Local law does not provide for this possibility. Refer to PCT.
What is the late filing fee? Not applicable

Patentable Subject Matter

What are the subject matter limitations or unpatentable subject matter (such as limitations on Method of Treatment Claims)?

  • inventions, the use of which would necessarily need to be stopped to protect public order, morality, people or animals’ health or to avoid severe environmental damage
  • therapeutic, diagnostic, or surgical methods applicable to the treatment of humans or animals
  • plants and animals, except microorganisms not found in nature
  • essentially biological processes for the production of plants or animals, except for non-biological or microbiological processes
  • in general, inventions lacking novelty or those that do not substantially modify a prior invention
Is absolute novelty required? Costa Rica does require absolute novelty for patentable subject matter. An invention is deemed to be novel as long as the subject matter does not exist in prior art. Prior art will not include any disclosures made, directly or indirectly, by the inventor or by the inventor’s successors up to one year prior to the filing date (or applicable priority date) or disclosures that are the result of an illegal act against the inventor (e.g. trade secret theft).
What is the time required for grant of a patent of invention? Variable. Upwards from 4 or 5 years is common.
What is the term (period of protection) for each type of patent? 20 for patents of invention and 10 years for utility models and industrial designs
How many claims are allowed? Indefinite.
How many claims are allowed in the fixed government fee? Indefinite.
What is the fee for each extra claim? N/A

Requirements for Filing

What documents are required at the time of filing?

  • Power of Attorney; requires notarization under the laws of the country of issuance (apostille/legalization is optional).
  • If inventor is not the applicant, Assignment Document (requires apostille under the Hague Convention or legalization by the nearest Costa Rican Consulate) or a declaration as to the applicant’s entitlement, under PCT Rule 4.17.
  • Translation into Spanish of any documents written in a foreign language; namely the description, drawings, claims and abstract.
Do you need to send an assignment document? A simple copy via email is appreciated, but not required. Signature is not necessary. It is used to prepare a declaration as to the applicant’s entitlement. 
Can scanned copies be submitted or originals are required? The Power of Attorney must be original.
What are the specific requirements for documents (size, paper, margin, etc.)? None in particular. Letter-sized sheets of paper preferred.
What are the specific requirements for drawing (size, paper, margin, etc.)? Drawings cannot exceed 15 cm x 15 cm and may not contain text, only reference number as appropriate. Drawings may be substituted with photographs in a neutral background and without shadows.
Is there any requirement for legalization/notarization of documents? Yes, the Power of Attorney requires notarization under the laws of the country of execution. The assignment, if submitted, requires consular legalization or, preferably, apostille under the Hague Convention.
Is there any requirement for submitting prior art search documents? No.
Is a foreign filing license required to be submitted? No.
Which specific documents have to be translated (e.g. full specification, only claims)? Claims, description, and abstract.
Is it is essential to submit the translation at the time of filing or part of translation (yes/no)? No.
If no, what is the time period of submission of translation? 15 working days after the filing date.
Is there any extension allowed for submitting translation? If yes, what is the extra fee, if any? N/A
What is the period for submitting missing documents? In general, 15 working days as of the filing date. The Patent Office grants in practice two months as of the filing date for Powers of Attorney and the Assignment (if required).
Is there any extension allowed for late submission of documents. Officially, late submission of documents is not provided for.
What is the fee, if any, for late submission of documents? None.

Publication

What is time period for publication of application? Approx. 1 to 4 months after the filing date.
What is the fee, if any for publication? The usual costs of publication is US$175-250, but may vary depending on the length of the notice or if it includes drawings.
Can a request for early publication be made (yes/no)? If yes, what is the fee, time and procedure? N/A
Can a request for non publication be made (yes/no)? If yes, what is the fee, time and procedure? Not provided for.

Amendments

Are amendments allowed or no? Yes.
What is the time period for submission of amendments? An amendment can be filed at any time prior to publication of the grant decision. It must not exceed the original disclosure.
What is the fee, if any, for submission of amendments? No official fee.

Divisional

What is the divisional application practice in Costa Rica? A divisional cannot be filed unless there are unity of invention issues, as determined by the examiner.
What is the time period for submission of a divisional? A divisional can be filed at any time prior to publication of the grant decision.
What is the fee, if any, for submission of a divisional? No official fee.

Examination

When does the examination phase begin? The Office issues an invoice inviting the applicant to pay the fee. This occurs upwards from three years after publication.
What is the time period for filing request for examination? N/A
What is the fee for filing request for examination? $525 for patents of invention and utility models; $390 for designs.
Is there any pre-condition for filing a request for examination (e.g. availability of search report in EPO)? No.
Can the time period for filing request for examination be extended? If yes, for how much time, and how much extra fee, if any? No.
What is the present backlog in receiving First Examination Report? Upwards from three years for patents of invention.
Is early/accelerated examination allowed (yes/no)? No.
What is the time period for requesting early/accelerated examination? N/A
What is the fee, if any, for requesting early/accelerated examination? N/A
Is there any other pre-condition for requesting early/accelerated examination? N/A

Office Actions

What is the time period for replying to office actions? 1 month.
Is there any extension of time allowed for replying to office actions? Generally, no.
What is the fee, if any, for extension of time for replying to office actions? N/A
What are the provisions for Request for Continued Examination (RCE)? N/A

Pre-grant opposition (or third party observation)

Is there any pre-grant opposition (yes/no)? Yes.
Who can file a pre-grant opposition? Anyone.
What is the time period for filing pre-grant opposition? 3 months.
What is the fee for filing pre-grant opposition? US$25.
What are the conditions for filing pre-grant opposition? Filing evidence, arguments and paying the fee.

Grant

Is there notice of allowance of patent (yes/no)? Yes.
Is there any publication of grant (yes/no)? Yes.
What is the issue/publication fee, if any? $500/$125 + service fee

Maintenance of patent and annuities

When does the time start for maintenance of patent (before/after grant)? After grant. Annuities do not need to be paid during prosecution for applications filed before April 24, 2014. For applications filed on or after April 24, 2014, annuities during prosecution are payable retroactively upon grant of the application. When the Patent Office issued the grant notice, the applicant has a 2-month deadline to make the payment.
What is the frequency for payment of maintenance fee? Yearly, but 2 or more annuities may be paid in advance.
What is the maintenance fee every year, for the full term of the patent? $500 per year.
Is there any requirement for statement of working which needs to be submitted annually/on demand? No.

Rights of patentee

From when do the rights of patentee accrue? Protection is assured from the date of filing of the application or the applicable priority date but it does not become effective until the patent is granted.
From when can the patentee file infringement proceeding? Prior to grant, but enforcement of a judgment shall be deferred until grant.

Compulsory license

What are the provisions for compulsory license? If the invention is not worked, it must be licensed; public utility licenses when national emergencies, security interest or public reasons so demand. Lack of working 3 years after grant or 4 years after the filing date or being sanctioned for anti-trust violations.
Who can apply for compulsory license? Government or any party with a legitimate interest.
What is the time period for applying for compulsory license? For the government, during the entire lifetime of the patent. For third parties claiming lack of working, 3 years after grant or 4 years after the filing date, whichever is the longest.
What is the fee for applying for compulsory license? N/A
When and how can an opposition to the grant of compulsory license be filed? It can always be challenged, based on the general principles of due process of law.

Post-grant opposition

Not provided for.

Revocation

What are the provisions for revocation? Nullity/caducity actions are available in Costa Rica.
Who can file revocation proceedings? Any party with a legitimate interest or ex officio by the Office.
When can revocation proceedings be filed? At any time during the lifetime of the patent.
What is the fee for filing revocation proceedings? Not provided for.