Adriana Barrera of Barrera & Asociados (BARLAW) summarizes the Peruvian Patent Office’s report on its patent and design adjudication work in the past five years
The Peruvian Patent Office (PPO) recently published a report on the patent and design cases it dealt with in the past few years. The Office said that the purpose of the report was to ‘disseminate the achievements of the Commission, with the expectation that they contribute to consolidating an optimum environment for the generation of new investments in Peru’.
The PPO comprises the Directorate, which handles applications for industrial property rights such as patents and designs, and the Commission, which deals with first instance administrative disputes concerning those rights.
The report noted that the two important objectives for the PPO were to ensure: (a) its decisions are supported by quality technical reasoning; and (b) speed in resolving patent and design disputes, positioning Peru as one of the countries in the region where one can obtain swift decisions.
Between 2014 and 2018, according to the report, the PPO received 34 ex-parte complaints concerning designs, 14 ex-parte complaints for utility models, and 12 ex-parte complaints related to patents. This means that 56% of the disputes handled by the PPO in the last five years were on industrial designs. Notably, nine of the design cases related to designs in the electricity sector and the rest were in different sectors.
As for patents, seven of the complaints concerned pharmaceutical inventions, while the other five were about inventions in the field of engineering. For utility models, six of the complaints related to the protection of industrial machines, four concerned technologies in the locksmiths sector, and the other four were in different classes.
Finally, the report looked at the timeframe to resolve a dispute before the PPO. According to the law, the PPO has 180 working days to resolve a patent or design disputes. The PPO considers that it is not only necessary to grant an injunction but also that it should be granted in due time. In 2018, it took the PPO on average 108 working days to resolve a dispute (compared to 165 working days in 2017).
The PPO has also tried to reduce the time it takes to grant injunctions or precautionary measures. In 2017, it took 30 working days to grant an injunction in a patent infringement case, but in 2018 the time was reduced to eight working days. In 2017, an injunction in a design infringement matter was granted in 10 working days but this went down to three working days in 2018.
Despite the swift adjudication of disputes by the PPO, its decisions have attracted respect among users because, between 2014 and 2018, around 70% of decisions appealed to the Administrative Court of Appeals were affirmed while only 30% were quashed.
The report also noted that last year saw the highest penalty for infringement issued and a rise (47% increase compared to 2017) in the use of ‘inspection out of process’ procedure. The ‘inspection out of process’ is a mechanism used by right holders in cases when infringement is suspected. With this mechanism, the right holder may obtain evidence that can be used in a future patent or design infringement action.
Another notable development was the amendment of Legislative Decree 1075, which regulates infringement proceedings before the PPO. The amendments eliminated the fees that a right holder had to pay for the substantial examination of the complaint, and ensured that the precautionary measures do not expire when there is an appeal.
Although the PPO has improved its work to make Peru an attractive country for foreign and national right holders, the statistics show that it is not yet one of the leading countries for new inventions and designs. Peru still needs to improve its patent and design system. The complete report can be found at www.indecopi.gob.pe