Patents and Trademarks
An outline of the situation regarding patents and trademarks in Peruvian pharma. Prepared in association with Osterling Abogados, a leading global law firm, this is an extract from The Pharma Legal Handbook: Peru, available to purchase here for USD 99.
1. What are the basic requirements to obtain patent and trademark protection?
A patent application must comply with 3 basic requirements, meaning that a patent must have:
- Inventive Level
- Industrial Application
A trademark application must both be distinctive and must be able to differentiate itself from other registered trademarks.
2. What agencies or bodies regulate patents and trademarks?
Patents and trademarks are regulated by the National Institute for the Defense of Competition and Intellectual Property (INDECOPI in Spanish)
3. What products, substances, and processes can be protected by patents or trademarks and what types cannot be protected?
Any product can be protected with a trademark.
Any product, process and substance that complies with the requirements established in question 2 can be protected. However, the following will not be considered inventions:
- Discoveries, scientific theories and mathematical methods;
- All or part of living beings as they are found in nature, natural biological processes, the biological material existing in nature or one that can be isolated, including genome or germplasm of any to be a natural alive;
- Literary and artistic works or any other protected by the right of Author;
- The plans, rules and methods for the exercise of intellectual activities, games or economic-commercial activities;
- Computer programs or software, as such;
- The ways by which information is presented
4. How can patents and trademarks be revoked?
Trademarks can be revoked with a nullity action if the trademark was granted contrary to regulation. Furthermore, they can be cancelled if they haven’t been used after the grace period (3 years) expires.
Patents can only be revoked with a nullity action if it was granted contrary to regulation
5. Are foreign patents and trademarks recognized and under what circumstances?
Foreign trademarks are recognized in the following circumstances:
- Any trademark registered in Ecuador, Colombia and Bolivia will have the same protection as a trademark registered in Peru provided the owner of these trademarks proves to have a real interest in the market. (i.e. An opposition can be filed with a Colombian registration but an application for an identical trademark must be filed)
- A trademark might receive protection from the Washington Convention regarding the possibility to oppose a similar application in Peru. In order to do so the oppose must comply with these requirements:
- Ownership of a registration in a country from the Washington Convention
- Evidence that the applicant has a previous knowledge of the existence of the registered trademark.
- Evidence of the first and current use of its trademark.
- Domicile in a country from the Washington Convention
Foreign patents are recognized under the PCT and Paris agreement granting a total of 30 months for a patent application.
6. Are there any non-patent/trademark barriers to competition to protect medicines or devices?
There are no other barriers to protect medicines or devices. However, commercialization, import, distribution and/or storage require an authorization.
7. Are there restrictions on the types of medicines or devices that can be granted patent and trademark protection?
There is no restriction in the types of medicines or devices than can be granted patent and trademark protection.
8. Must a patent or trademark license agreement with a foreign licensor be approved or accepted by any government or regulatory body?
A license agreement must not be approved or accepted by any government or regulatory body, but it must be registered for it to be opposable to third parties.