Amendment to Patent & Design Regulations in Costa Rica as of April, 2014

As of April 24, 2014, several new important changes practice before the Costa Rican Patent Office regarding Patents of Invention, Designs and Industrial Models & Utility Models came into effect.

The amendment is notable for introducing new  formal and substantive changes to payment of annuities, prosecution and filing of applications for registration of patents of invention, designs and industrial models and utility models. The amendment also consolidates de facto practices adopted by the Patent Office that did not have prior legal basis.

The Regulations were issued via Executive Decree No. 38289-H, published in official Gazette No. 78 of April 24, 2014, which amends and expands the existing Regulations to the Patents Law.

Some of the most notable changes include:

Patents of Intention and Utility Models

  • Dimensions of drawings may not exceed 15cm by 15 cm (5.90 inches by 5.90 inches) and shall not contain any text; only reference numbers to the corresponding text in the specification.
  • Drawings may consist of photographs of the subject matter of the invention, as long as they have a neutral background and no shadows.
  • Applications that are notoriously deficient may be automatically refused. 50% of the filing fee will be returned to the applicant.
  • One single extension of time to submit the Power of Attorney may be requested, as long as sufficient justification is provided.
  • At the request of the applicant, publication can be delayed for up to 12 months after the filing date.
  • Applicant facing an adverse examination report have 1 month to file a formal response. Within the first 15 days of said deadline, the applicant may choose to meet with the examiner to discuss the issue.
  • Payment of the grant fee for patents and utility models is assimilated to payment of the first patent annuity. However, at the same time, the applicant must pay second and subsequent annuities as of the date of presentation of the application. Failure to pay will cause the Patent Office to initiate legal action for collecting the amounts owed by the applicant.

Designs and industrial models:

  • The concept of novelty was changed substantially. A design or industrial model is deemed to be original as long as the exterior appearance is due to the creative effort of an individual creator and does not imply a change in color or shape of known designs and industrial models.

Inquiries: ip@alpilaw.com

Tel. (506) 2221-9058 or 2222-1785
Fax (506) 2222-6054

Costa Rica increases publication fees for trademark applications

As of February 25, 2014, the official Gazette increased publication fees for trademark applications 

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As frequent filers of trademark applications in Costa Rica know, official fees for trademark registration in the country are divided into two main categories. The first are filing fees, which are payable to the Industrial Property Registry at the time of filing. The second ones are publication fees, payable to the official Gazette after a successful formal and substantive examination of the application by the Trademark Office. Publication fees are often more expensive than registration fees.

As of February 25, 2014 the Administration Board of the Gazette increased in approximately $20 the minimum publication fees for trademark applications. In addition, applications that include a figurative element (such as a design, logo, stylized font or typeface, etc.) or cover an exceedingly long description of goods and services may also pay a publication surcharge.

Recently, the Gazette discontinued physical publication and the document is now only available online at: http://www.gaceta.go.cr/gaceta/

This publication is meant solely for general information and should not be regarded as legal advice. If you would like additional information, please contact:

For more information:

Luis D. Acuña
tel. 00 (506)  2221-9058
LDAcuna@AcunaLegal.com

 

China Passes New Trademark Law

The revision of the law was passed on August 30, 2013 by Standing Committee of the National People’s Congress (NPC), the country’s top legislative organ.

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This is the third revision of the People’s Republic of China Trademark, which has been under consideration for several years. The new law will take effect on May 1, 2014.

The new law contains comprehensive changes, including improved protection for foreign rights holders, provisions on bad-faith registrations and increased protection for well-known marks.

Other changes include, but are not limited to:

  • Time-frames for the administrative authorities to handle applications, appeals, opposition, cancellations, etc.
  • Registrability of sound marks
  • Multi-class applications
  • Statutory damages for infringement were increased to up to six times the previous limit
  • Punitive damages were introduced for the first time into China’s Trademark Law
  • Use of a third-party trademark as a company name may be actionable under Unfair Competition Laws

This publication is meant solely for general information and should not be regarded as legal advice. If you would like additional information, please contact:

For more information:

Luis D. Acuña
tel. 00 (506)  2221-9058
LDAcuna@AcunaLegal.com