Patents
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Newsletters and Bulletins / July 1997 / Panama |
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Panama - New Industrial Property Law A new Industrial Property Law came into effect in Panama on November 15, 1996, containing provisions on patents, utility models, designs, trademarks and trade secrets. The main provisions are summarized below.
Patents 1) Patents shall not be granted for:
1. theoretical or scientific principles; 2. discoveries, designs, projects, sketches, economic or business principles or methods; 3. games; 4. software programs per se; 5. data presentation formats; 6. methods for surgical, therapeutic or diagnostic treatment; 7. vegetable species, animal species and breeds; 8. biological material as it is found in nature; 9. living matter of the human body; 10. vegetable varieties and essentially biological means for obtaining or reproducing plants or animals; and 11. inventions that are contrary to morality or the integrity or dignity of human beings. 2) The requirements for patentability are novelty, the use of inventive activity and susceptibility to industrial use. Novelty is judged on a world-wide basis. However, there is a one-year grace period for publications originating from the inventor. This grace period does not, however, apply to publications made by Patent Offices as part of the proceedings for grant of a patent in another country. 3) Within 14 months of filing an application, a request on the state of the art must be requested. Publication of the application will take place 18 months after filing. Published applications are open to opposition for a period of 2 months after publication. 4) The maximum duration of patent under the new law is 20 years from the filing date. 5) The former practice of granting confirmation patents or revalidation patents based on patents granted in other countries has been abolished. Utility Models The new law for the first time creates a new type of right in the form of a utility model to provide protection for innovations that are insufficiently inventive to qualify for patent protection. Utility models do not have to meet the requirement of the use of inventive activity, as is required for patent protection, and have a maximum duration of 10 years from filing. Designs Protection for designs requires only novelty. Protection is initially for a period of ten years which can be renewed for a further five years. Additionally, industrial designs enjoy protection automatically without registration for the first two years after disclosure in Panama.Trade Secrets Industrial or trade secrets are defined as "all information of an industrial or commercial application" that "is kept confidential" and allows its owner "to obtain or maintain a competitive or economic advantage over third parties." The definition also requires that sufficient steps be taken in order to preserve the confidentiality and restricted access to such secrets.The law prohibits the illegal acquisition, disclosure or use of an industrial or trade secret by a party, or through a third party. Violations of the trade secret provisions may result in a claim for damages or criminal sanctions. Trademarks 1) Registrable marks are defined as any mark, sign, word, or combination thereof, which is capable of distinguishing the goods or services of one party from those of others, and may include, inter alia, personal names, three-dimensional shapes, colors or combinations of colors. 2) Marks may not be registered if they are confusingly similar to the following, including Spanish translations thereof: marks that have been previously used, recognized, registered or applied for in respect of similar goods or services; marks that are famous or renowned for any goods or services; marks well-known or recognized by the relevant consumers; or prior trade names that are nationally or internationally recognized. 3) The following may not be registered as trademarks: titles of literary, artistic or scientific works; fictitious or symbolic characters; those that conflict with rights of personality; or words, letters, characters or signs used by indigenous or religious groups or non-profit organizations. 4) The concept and protection of famous and notorious marks has been introduced and owners of such marks, even though not registered in Panama, may object to the use and registration of similar marks. 5) It is no longer necessary to base a Panamanian trademark application on a previous registration for the mark in another country; likewise, proof of renewal of a basic registration is no longer required for the renewal of a Panamanian registration. 6)Action against trademark infringement must be taken within 6 years following the last infringing act. 7) Remedies for trademark infringement have been expanded. 8) The period of non-use that renders a registration vulnerable to cancellation has been extended from 1 year to 5 consecutive years following registration. 9) The statute of limitations for cancellation of a trademark registration is 10 years from the date of registration, unless such registration was obtained in bad faith. 10) Belated renewal has been extended from 30 days to 6 months from the expiration date, upon payment of an additional fee. 11) The term within which to file an opposition has been reduced from 90 days to 2 months from the date of publication. 12) Collective marks and guaranty marks may now be registered. 13) Assignment and license agreements must be recorded with the Trademark Office to be effective with respect to third parties. 14) Local or foreign trade names and advertising slogans or signs are registrable under rules similar to those governing trademarks. Enforcement Under the new law, any party connected with the infringement of the industrial property rights protected by the law may be held responsible in both civil and criminal proceedings and may be subject to substantial fines, compensatory damages, temporary or permanent suspension of the right to engage in commerce or industry or forfeiture of the infringing goods and equipment used to produce the goods. In addition, the Director General of Customs is authorized to inspect or to withhold goods that are suspected of infringing industrial property rights, whereupon the owners of the infringed property rights are to be notified and they may request further investigation and prosecution by the Attorney General's Office. The Attorney General is also empowered to initiate infringement investigations ex officio upon receipt of information concerning potential infringements. |
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