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INTELLECTUAL PROPERTY PROCEDURES

PERU (PE)
Patents National Law
The protection of a patent in Peru is subject to its registration by filing an application with the Directorate of Inventions and New Technologies of the National Institute for the Defense of Competition and Protection of Intellectual Property (INDECOPI). The patent registration process is the longest, and it takes at least two years.
Patents are granted in Peru, for products or processes in all areas of technology that are new, have an inventive level and are susceptible of industrial application. The authority grants the owner of a patent the exclusive right to exploit his invention within its territory. An invention will be considered new, when it is not included in the state of the art. The state of the art includes everything that has been made available to the public by a written or oral description, use, commercialization or any other means before the date of presentation of the patent or, where appropriate, the recognized priority.
The first application for a patent of invention that has been filed in another member country of the Andean Community or in the countries that are members of the Paris Convention, or with an international authority with which Peru is bound by a treaty in which similar priority rights are established, confers upon the owner or assignee of the applicant the right of priority. The request that claims the priority must be presented in the following non-extendable terms, counted from the date of presentation of the applications whose priority is claimed: One year for patents for invention and utility models, and six months for industrial designs.
Patents─Term of protection The protection of the right that is granted, by the registration of the patent, lasts 20 years. Once the term ends, the patent will become part of the public domain.
Patents─Process of application
To apply for a patent, the application is submitted to the New Inventions and Technologies Department with the request of the inventor, which includes, among others, the identification data of the applicant, a complete description of the invention, and proof of payment of the fees. established. If the applicant meets all the legal requirements, the Directorate will publish a summary of the application within 18 months. Therefore, the request will be kept in reserve for that time.
Within a period of 60 days following the date of publication, any person with a legitimate interest may, once only, oppose the patent application by presenting valid reasons to invalidate the patentability of the invention. The applicant will have a period of 60 days to answer the opposition, which can be extended for an additional 60 days, after which the Commission will resolve the opposition. The applicant may request that the patentability of the invention be examined within six months after the publication of the application, regardless of whether or not the application is filed.
The Directorate of Inventions and New Technologies is competent to review the following:
Application for registration of patents and new inventions
Application for industrial design registration
Application for registration of an integrated circuit design
Application for registration of a Plant Variety Breeder Certificate
Request for registration of utility models
Patents─Obligation to exploit; compulsory licenses
The owner of the patent is obliged to exploit the patented invention in any member country of the Andean Community, either directly or through an authorized person. To maintain the patents in force, it is necessary to pay annual fees that must be paid in advance. The expiration date is the last day of the month in which the application was submitted. Failure to pay an annual fee will result in expiration of patents. These annuities must be paid for as long as the patent is valid.
Under Decision 486, compulsory licenses are provided when the patent is not exploited or is not sufficiently exploited within a period of three years from the date of grant of the patent or within four years of its presentation date, whichever is greater. Compulsory licenses are not exclusive and may also be granted to ensure free competition in the market to avoid practices of unfair competition. The concessionaire must pay the patent holder adequate compensation.
In case it is declared by public interest, emergency or national security and only while these reasons remain, the patent may be subject to compulsory license at any time. The granting of a compulsory license for reasons of public interest, emergency or national security does not diminish the right of the patent holder to continue exploiting it.
Patents─ Patent Cooperation Treaty (PCT)
As mentioned above, Peru is now a Contracting State of the Patent Cooperation Treaty (PCT), which establishes a unified procedure for the presentation, search and examination of applications for protection of inventions and for the provision of special technical services. on an international level. It can also be used for the granting of an inventor's certificate, a utility model certificate, instead of a patent. The PCT entered into force for Peru on June 6, 2009.
The PCT system consists of a unified application procedure for a patent between the Contracting States, in such a way as to prevent the applicant from having to initiate a different process in each State in which protection for the invention is desired. Therefore, any request submitted under this treaty will be considered an "international application". Any resident or national of a Contracting State may submit an international application. In Peru, it will be the National Institute for the Defense of Competition and Protection of Intellectual Property (INDECOPI), who finally grants or denies the patent in accordance with established national procedures. The concepts of residence and nationality and the application of these concepts are defined in the Regulation.
It is important to take into account that an applicant, whether a natural person or not, who is a national and domiciled in Peru will have a reduction of 90% of the international filing fee and the supplementary search and processing fee (international preliminary examination).
Patents─Patents (PCT) ─Filing the application
The PCT procedures take into account two stages: one international and one national. The international scenario consists of: an international application, an international search and, if requested, an international preliminary examination. The national stage includes all the requirements established in the INDECOPI legislation that must be evaluated by the authority to grant the patent.
The international application must be submitted, at the choice of the applicant: at the national office of the Contracting State or acting for the Contracting State of which the applicant is a resident, at the national office of the Contracting State or acting for the Contracting State of which the The applicant is a national, or outside the Contracting State of which the applicant is a resident or national, in the International Bureau.
The international application will be written in the language prescribed by the Receiving Office (in Peru it is INDECOPI). It will be in a language that is valid for the International Searching Authority and also in a language valid for publication. This request will comply with the material requirements as well as with the prescribed requirements of unit of the invention and will be subject to the payment of the specified fee ("international filing fee") and to any other requirement necessary for a national application.
Every request will contain at least the following elements: the name and the indication that the applicant has the right to present the same (either by reason of nationality or domicile); the indication that it has been submitted as an international application, the designation of a Contracting State at least; a description and one or more claims. Likewise, it may contain a declaration in which the priority of one or more previous requests filed in or for any country party to the Paris Convention for the Protection of Industrial Property or in or for any Member of the World Trade Organization is claimed. that is not part of said Agreement.
The international application will be submitted to the prescribed receiving Office, which will verify it and transmit one copy to the International Bureau and another copy to the International Searching Authority. Said processing is subject to the payment of a fee ("transmission rate") established by the receiving Office equivalent to the rate established by the International Administration.
When an international application has been received by a national office on behalf of the International Bureau as the receiving Office, that national Office should transmit it as soon as possible to the International Bureau. This referral may be subject to the payment of a fee by the national authority, for its own benefit, equivalent to the transmission fee charged by said office. The international application transmitted shall be deemed to have been received by the International Bureau as the receiving Office on the date of receipt of the international application by that national office, that is, INDECOPI.
Any international application that complies with the requirements listed in the PCT, is equivalent to a presentation of an application in the national territory in accordance with the provisions of the Paris Convention for the Protection of Industrial Property. If the receiving Office, that is, the INDECOPI, determines that, upon receipt of the documents that constitute an international application, all physical requirements are met, it will assign the date of receipt of the application as the date of international filing. international.
Patents─Patents (PCT) ─ International search and opinion
Each international application is subject to an international search and an International Search Report as well as a written opinion, carried out by an International Searching Authority (which may be INDECOPI or an intergovernmental organization). The purpose of the international search is to discover the relevant technique on the basis of the claims, taking into account the description and drawings. The relevant technique consists of everything that has been made available to the public anywhere in the world through a written disclosure (including drawings and other illustrations) and that is helpful in determining whether the claimed invention is new or not, and whether it involves or not an inventive activity. The international search should cover all technical sectors, and will be carried out on the basis of all the search files, which may contain material relevant to the invention. To the extent possible and reasonable, the international search should cover all the subject matter to which the claims refer or which can reasonably be expected to be addressed once they have been modified. It may also contain the indications to the unit requirement of the invention.
The written opinion refers to whether the claimed invention appears to be new, implies an inventive step and is susceptible of industrial application and if the international application complies with the requirements of the treaty and its regulations to the extent that it is verified by the Search Administration International. The written opinion must contain a notice informing the complainant that, if a request for international preliminary examination is made, the written opinion will be considered as a written opinion of the Administration in charge of the examination. In this case, the applicant must submit to the Authority, within two to three months, a written response together with the amendments, if applicable.
This international search report and opinion, as soon as it is established, will be transmitted by the International Search Manager to the applicant and to the International Bureau. The applicant then has the right to modify the claims, within two months from the date of transmission of the report or 16 months from the priority date, applying the term that expires later. Amendments must be submitted directly to the International Bureau.
Patents─ Patent Cooperation Treaty (PCT) ─Confidentiality of the Application
The International Bureau and the international search authorities can not allow the access of any person or authority to the international application before the international publication of such an application, unless the request or authorization of the applicant.
Patents─ Patent Cooperation Treaty (PCT) ─Communication to designated Offices
The international application, together with the international search report, must be communicated to each designated office, unless the designated office renounces such requirement in whole or in part.
Patents─ Patent Cooperation Treaty (PCT) ─Publication
The International Bureau should publish international applications and search reports immediately after the expiration of 18 months from the priority date of the application in the PCT Gazette, as well as the claims and their amendments. From the date of publication, the patent application will enter the state of the art. The applicant may request the International Bureau to publish its international application at any time before the deadline. There will be no international publication if the international application is withdrawn or considered withdrawn before the technical preparations for the publication have been completed.
Patents─ Patent Cooperation Treaty (PCT) ─International preliminary examination
At the request of the applicant, the international application may be subject to an international preliminary examination by the International Preliminary Examining Authority subject to the payment of the established fees. This request has the effect of suspending the national stage in up to 30 months from the priority date. The request for international preliminary examination must be submitted separately from the international application. The request may be made at any time before the expiration of any of the following periods expires later: three months from the date of transmission to the applicant of the international search report and the written opinion or 22 months from the priority date.
The objective of the international preliminary examination is to formulate a preliminary and non-binding opinion on the question of whether the claimed invention appears to be new, implies an inventive step and is susceptible of industrial application. This will allow the applicant to better evaluate the possibilities of being granted a patent in the designated States without incurring the expenses involved in this process. The applicant has the right to modify the claims, description and drawings before the international preliminary examination report is established. The amendment can not go beyond the disclosure contained in the international application as presented.
The granting of a patent will follow the regular national legislation.
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Design National Law
Registration of industrial designs in the Peruvian Legislation
The regulation on industrial designs in Peru is established by Decision 486 of the Andean Community.
It is a Common Regime on Intellectual Property for the Countries of the Andean Community.
What is protected?
The particular appearance of a product that results from any meeting of lines or combinations of colors, or any two-dimensional or three-dimensional external shape, line, contour, configuration, texture, or material, without changing the destination or purpose of said product.
Who has the right to register an industrial design?
The right to register an industrial design belongs to the designer.
• If several people jointly made an industrial design, the right to register corresponds in common to all of them.
• If several people make the same industrial design, independently of each other, the registration will be granted to the one or his successor in title who first presents the corresponding request or, if priority is claimed, who invokes the priority of the oldest date.
• This right may be assigned or transferred by succession.
• The holders of the registry may be natural or legal persons.
What industrial designs can be registered?
Only industrial designs that are new will be protected.
• An industrial design shall not be considered new if, before the date of the request or the priority date validly invoked, it has been made accessible to the public at any place or time, by its description, use, or by any other means.
• An industrial design will not be considered new simply because it presents secondary differences with respect to previous creations, or because it refers to another class of products different from the one to which these creations belong.
What creations are not registrable?
The following industrial designs can not be protected:
a) Industrial designs whose commercial exploitation in the territory of Peru must be impeded to protect morality or public order. However, the commercial exploitation of an industrial design shall not be considered contrary to morals or public order simply because exploitation is prohibited or regulated by a legal or administrative provision;
b) Industrial designs whose appearance was dictated essentially by considerations of a technical or functional nature and that do not incorporate any arbitrary contribution of the designer; Y
c) Industrial designs that consist only in a form whose exact reproduction is necessary to allow the product incorporating the design to be assembled mechanically or connected with another product of which it forms part. This prohibition does not apply to products in which the design consists of another form of allowing the assembly or multiple connections of the product or its connection within a modular system.
What rights does the owner have?
The registration of an industrial design will last for ten years, counted from the date of presentation of the application.
The protection conferred to an industrial design will not be applied to the elements or characteristics of the design dictated essentially by technical or functional considerations or that do not incorporate any arbitrary contribution of the designer.
What registration procedure should the applicant follow?
An application for the registration of an industrial design must be submitted to the Peruvian Patent Office.
The request must contain:
a) The request;
b) Graphic or photographic representation of industrial design. This representation, in the case of two-dimensional designs incorporated in a flat material, can be substituted with a sample of the product that incorporates the design;
c) Power;
d) Proof of payment of the established fees;
e) If applicable, the transfer document.
The application request for industrial design registration consists of a form and will include the formal application for registration and information of the applicant, the designer and the industrial design.
Reception date
The request must contain at least the following elements to be assigned a filing date:
a) A statement that the applicant is submitting an application for registration of an industrial design;
b) Identification data of the applicant or the person submitting the application that will allow the Patent Office to communicate with said person;
c) A graphic or photographic representation of industrial design. This representation, in the case of two-dimensional designs incorporated in a flat material, can be substituted with a sample of the product that incorporates the design;
d) Proof of payment of the established fees.
Failure to comply with these requirements will result in the application not being admitted for processing by the Patent Office and the filing date will not be assigned.
Requirements of formality
The Patent Office will examine the application within 15 days from the filing date (sometimes it may take a little more time) to determine if it complies with the terms and conditions of form.
If the examination of terms and conditions of form results in the application not meeting the requirements of formality, the Patent Office will notify the applicant to complete these requirements within a period of thirty days following the date of notification. At the request of a party, said term may be extended once and for the same period without loss of priority. If upon the expiration of the established term the applicant fails to comply with the indicated conditions, the application will be considered abandoned and will lose its priority.
Publication
If the application meets the established requirements, the Patent Office will order its publication.
An application can not be consulted by third parties until its publication has been ordered at the end of the stipulated period, unless written consent has been obtained by the applicant.
Opposition
Within a period of thirty days following the date of publication, any person with legitimate interest may submit, once only, valid reasons to oppose the registration of the industrial design. At the request of a party, the Patent Office may grant such persons, once only, an additional term of thirty days to support their opposition.
If an opposition has been filed, the Patent Office will notify the applicant so that within thirty days of such notification he presents his arguments or documents, if he considers it appropriate. At the request of a party, the Patent Office shall grant an additional period of thirty days to answer the objections raised.
Exam
Upon the expiration of the established period for filing an objection, or if no objections have been filed, the Patent Office will examine whether the purpose of the application meets the requirements for obtaining registration.
The Patent Office will not ex officio conduct any novelty examination of the subject matter of the application unless a third party has filed an opposition to the design registration. However, if the lack of novelty is obviously obvious, the Patent Office may deny the request of office.
Granting the registration
Once the established requirements have been met, the Patent Office will grant the industrial design registration and issue the corresponding certificate in favor of the owner.
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Trademarks National Law
The protection of a trademark in Peru is granted by the registration before the Directorate of Distinctive Signs of INDECOPI. Generally, the registration process lasts approximately four (4) months as long as no opposition is presented. Unregistered marks, with the sole exception of well-known marks, have no protection even if they have been used for years. Trade names are protected by their use, whether they are registered or not. The owner of a well-known mark may prevent third parties from registering it.
Legal basis is the Andean Community Decision 486—Common Provisions on Industrial Property in force since December 1, 2000, and the Legislative Decree No. 1075 in force as from February 1, 2009, last amended with the Legislative Decree No. 1309 dated December 30, 2016.
Peru is a member of the Andean Community.
According to the Andean Community agreement, there are common rules in trademark law in all member states of the Andean Community (Bolivia, Colombia, Ecuador, Peru).
Trademark protection is obtained by registration.
Classification
Nice classification, 11th edition
What is Registrable as a Trademark
Registrable as a trademark are all distinctive and graphically representable signs, such as words, names, acronyms, letters, numbers, devices, emblems, colours, colour of combinations, three-dimensional forms, the three dimensional form of a good or its packaging, holograms, sound marks and any combination of the mentioned signs.
The following trademark types are registrable: trade marks, service marks, collective marks, designations of origin, certification marks, trade names and titles of establishment.
Proceeding of Trademark Registration
The application is filled at the Direction of Distinctives Signs of the Peruvian Trademark Office (INDECOPI).
Multiple-class applications are possible. Even though one application is possible, the official fees have to be paid for each class.
Foreign applicants need a local agent.
A non-notarized and non-legalised, simply signed power of attorney is sufficient.
Foreign applicants do not need a domestic registration.
The application process includes a formal examination, an examination of distinctiveness and a search for prior trademarks.
The processing time from first filing to registration or first office action is approx. 5 to 6 months.
Prior to registration, the trademark application must be published in the official gazette “El Peruano” within a period of 30 working days.
Opposition Period
National:
The opposition period is 30 working days from publication date of the application. Oppositions are also possible by owners of trademarks in other member states of the Andean Community.
Trademark Duration
A trademark registration is valid for 10 years from the date of registration.
The registration is renewable for periods of 10 years.
Grace Period for Trademark Renewal
The grace period for renewals is 6 months from the expiration date of the trademark.
Use Requirements
If the trademark has not been used for a continuous period of 3 years in a member state of the Andean Community, it may be subject to cancellation action for non use by third interested parties as means of defense.
The protection of a trademark in Peru is granted by the registration before the Directorate of Distinctive Signs of INDECOPI. Generally, the registration process lasts approximately four (4) months as long as no opposition is presented. Unregistered marks, with the sole exception of well-known marks, have no protection even if they have been used for years. Trade names are protected by their use, whether they are registered or not. The owner of a well-known mark may prevent third parties from registering it.
In this sense, under Decision No. 486, an application for registration can be enforceable if the trademark is identical or substantially similar to another trademark previously registered or previously requested in any country of the Andean Community, if the trademark distinguishes same goods or services, or for goods or services whose use of the brand may cause confusion or wrong association with consumers.
The parties to a proceeding can agree on the coexistence of identical or similar trademarks, provided that INDECOPI considers that such coexistence does not affect the general interest of consumers.
Trademarks - Equal opportunity for foreign holders
According to the Industrial Property Law, national and foreign trademark owners have equal rights. Any advantage, favor, privilege or immunity granted to a member of the Andean Community must also be granted to nationals of all other members of the Paris Convention. The law does not distinguish between individuals or legal persons.
Marks─Priority
It can be submitted to registration in addition to trademarks, trade names, commercial slogans, collective trademarks and trademark certificates.
The applicant for a trademark has a period of 30 working days to answer the oppositions made by the applicants, after which the Commission will decide on the opposition and if it grants or denies the registration. Against the ruling of the Commission, there is an appeal for the INDECOPI Court to rule in the second and last instance.
TradeMarks─Procedure─Term of protection and renewal
The registration of a trademark allows the owner of the trademark to use it exclusively for 10 years and renew it for periods of 10 years in succession. The renewal does not require that the use of the same be demonstrated; will be granted automatically in the same terms of the original record. There is a six-month grace period in addition to expiration to renew the brand. After this period, the trademark expires officially and in case the trademark owner is interested, he must re-initiate the trademark application. In addition, there are no objections to the process against those trademark applications filed within 6 months of the expiration of the grace period.
The Renewal procedure lasts approximately two to three months.
Brand use tests are not necessary for the renewal of a trademark, and registration may be canceled if the trademark has not been used for an uninterrupted period of at least three years prior to the start of the cancellation procedure if requested by third. The Commission of Distinctive Signs will transfer the action so that the owner of the mark answers the cancellation action and presents the evidence that it deems appropriate to demonstrate the use of the mark.
Before the trademark registration application, you are free to preliminarily investigate whether the required expressions are registered on behalf of another person. JR ROSAS LAW FIRM can make your trademark registration transactions by communicating with a specialist staff consisting of profoundly thoughtful, highly analytical professionals, each specialized in their field.
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