Dear friends and colleagues,

We are excited to share with you that Managing IP has once again awarded us. This year 2019 with two trophies:

  • Peruvian Patent firm of the year
  • Peruvian Trademark firm of the year

Our commitment for the upcoming years is to continue offering the best IP services in Peru.

Thank you for your support!.

We are contributing to the management of Intellectual Property in the age of artificial intelligence protecting innovation and creativity of inventors as well as patents as utility models or industrial designs. Thus, several types of Robots have been protected and in the field of biotechnology and several types of pharmaceutical application antibodies for arthritis, cancer, diabetes, cardiovascular disorders, among others.

On the other hand, we support the close relationship of the University and the private company in the protection of results, the product of joint research in technological innovation, which constitutes new business opportunities.

In 2018 we successfully obtained the granting of 17 patents on behalf of the Pontificia Universidad Católica del Perú.

On the other hand, we continue to protect inventions that contribute to food and health innovation (for example, pro bono to institutions such as CIP or others, in their nutraceutical compounds); and agricultural innovation protecting new plant varieties as a breeder’s right, protection has already been granted to various varieties of blueberries, raspberries and other varieties are in process.

Research and development activities for the use of genetic and biological resources are an important element in our work where we harmonize innovation with conservation and respect for the environment.

We also work on Intellectual Property management strategies and support the development of universities research and development regulations by providing legal contributions so that they can develop and protect their inventions.

We are currently working with manufacturers of traditional, artisanal products, so that they can obtain their Denomination of Origin and maintain their characteristics and qualities with a reputation. An example is the pro bono work that was carried out with the farmers to obtain their “Pallar de Ica” Denomination of Origin.

It is highly important to have the Trademarks registered at Peruvian Customs. This will allow Officials to report us of any possible infringing products arriving from any destination.

Infringement actions before the Administrative Authority of INDECOPI, after goods being immobilized at Customs, are the most effective way to avoid products entering into the market. The advantage of having the trademark registered at Customs is mainly to have 10 calendar days to formally detain the shipment, instead of 3 calendar days for products with non- registered trademarks.

Since 2016, we have successfully acted in 53 infringement cases of merchandise valued at USD 600,000 approximately. Actions have been taken in favor of major clients within the fashion, shoes, clothing, sports, agriculture, toys and car manufacturing industries. In all cases, we achieved the detention and eventual destruction of fake products.

We have a specialized team of two trademark attorneys and one paralegal dedicated exclusively to report the clients on potential infringement cases.

We currently offer the service of registrations at Customs free of costs for our clients. Your instructions will suffice to have trademark rights duly protected at Peruvian borders.

If you have any questions, do not hesitate to contact us.

(Main changes)

On September 7, 2018, the official journal El Peruano published Legislative Decree 1397 (L.D. 1397) that modifies Legislative Decree 1075 (L. D.1075) on Industrial Property to improve efficiency in the framework of modernization, simplifying procedures . This decree has entered into force on September 8, 2018 except for Article 3 (including two new constituent elements of Industrial Property) and Article 4 (referred to the competent entities) which will come into force when its regulations are published.

Two constituent elements of Industrial Property have been added: Geographical indications and traditional specialties guaranteed. Therefore, Geographical Indications and Traditional specialties guaranteed will be protected, which will allow entrepreneurs from different sectors (Agriculture, Handicrafts and others) to access a registration  and protection to compete in global markets. (Article 3 of D.L. 1075).

Industrial Designs and Layout-Designs of Integrated Circuits have been added in the titles and content of articles 36, 37 and 38 referring to the inventions developed during employment relationship. Therefore, these conditions will also apply to industrial designs and Layout-Designs of integrated circuits.

The payment requirement for the substantive examination has been eliminated in the case of infringement denunciations regarding patents of invention, utility model patents and industrial designs. This elimination benefits the complainant by eliminating the obligation to pay. (Article 109 of L.D.1075).

A new reason for expiration of the precautionary measures has been added: Those measures that expire when the complaint had been declared groundless in the first instance, in this case they will expire with the issuance of said ruling. (Article 113 of L.D. 1075)

In the cases of Reconsideration and Appeal on patents it is established that the reconsideration/appeal briefs cannot be based on the modification of the specification, claims or drawings. (Articles 131 and 132)

Adherence system to the appeal brief before the Second Administrative Instance is contemplated (Article 136).

The Resolutions of Second Administrative Instance can only be questioned before the Judicial Power (Article 140).

The system of division of an industrial design application is established when it comprises more than one industrial design (Article 25-C).

Dear Colleagues and friends,

 

We are delighted to share with you our joy of been awarded by Managing Intellectual Property as the “Patent Firm of the Year 2018”. Last year, we were awarded as the “Firm of the Year 2017” as well.

 

These awards are a motivation to continue offering the best IP practice in our jurisdiction.

 

Please receive our best regards,

 

                                                  LINK:

                                              T2018Peru

Fashion Law

Industrial Property allows protection and defense to add value for creations in the fashion field.

Types of Protection

  1. INDUSTRIAL DESIGN

Strategic use of industrial designs allows protecting and defending fashion creations and innovations against a copy and an unauthorized use. Likewise, it is possible to prevent a person or company from appropriating others creation by applying for its registration in an opportune moment.

Given the dynamic nature of fashion to effectively protect new fashion designs (clothing and accessories), it should be advisable to apply for the new design in plans, that is to say, when it is designed at the virtual level or in the mold, before having been made in the mannequin or presented in an exhibition or fashion show to make it totally new and meet the requirement of our law.  In fact, Article 115 of Decision 486 states that “Industrial designs that are new shall be registrable.  An industrial design shall not be considered new if, before the filing date or validly claimed priority date, it has been made accessible to the public in any place or at any time, by description, use, commercialization or any other means.  An industrial design shall not be new by virtue of the mere fact that it embodies secondary differences in relation to earlier creations, or that it refers to a category of products different from that to which the said creations belong”.

The registration of the industrial design will allow the creator or its owner the protection and defense against the copy and the unauthorized use of a third party, and there would be the possibility of opportunely avoiding damage for the designer and/or owner, and also that the original design is copied or registered by a person other than de designer or by a firm that is not the owner.

Nowadays, Peru protects diverse designs of fashion fabrics, shoes, handbags, such as:

 

 

AVINTIV SPECIALTY MATERIALS INC., has obtained the protection since 24/03/2017 of this design.

 

Ornamentation Applicable to Textiles

Registration N° 3989  (2014)        Registration  N° 3990 (2014)

Owner: Inversiones y Decoraciones Stephanny.

 YAOHONG TU (Peru) has obtained the protection since 2014 of the design (Title N° 4158).

DIADORA SPORT S.R.L. (Italy) has obtained the protection since 2015 of the design  (Title N° 4494).

 

RIMOWA GMBH (Germany) has obtained the protection since 2013 of the design  (Title N° 3614).

 

  1. TRADEMARKS

Fashion designs can be registered as trademarks to obtain protection and defense against counterfeits and unauthorized uses.  Registering these designs as trademarks grants the holders the exclusive use by empowering them to carry out actions against infringers.  To grant a registration, our legislation, requires that the mark is sufficiently distinctive, which means that it must distinguish one type of product or service without being confused with the product or services this mark distinguishes, and it must be different from other marks in its field.

Nowadays, Peru protects as trademarks some fashion designs such as:

Article 134 of Decision 486.- For purposes of this system, any sign that is capable of distinguishing goods and services on the market shall constitute a trademark. Signs that are capable of graphic representation shall be eligible for registration as trademarks. The nature of the goods or services to which a trademark is to be applied shall in no case form an obstacle to the registration of the trademark.

 

The design of a blouse  protected since 2008 by the holder SAGA FALABELLA S.A., under Certificate N° 152200, in class 25 (clothing, footwear and headgear).

The following design     owned by José Manuel Herrar Castillo (Peru) is protected since 2011, under Certificate N° 180304 in class 25 (clothing).

GIANNI VERSACE S.P.A. has protected the medusa design   since June 27, 2001 under Certificates: N° 21422 in class 18 and 21423 in class 25.

LOUIS VUITTON has protected its flower design    since January 25, 2006 under Certificates N° 101207 in class 18 and N° 101209 in class 25.

Industrial designs and trademarks are elements of industrial property that allow the protection of creators, designers and owners in the Fashion Industry within Fashion Law.

COACH, INC. has protected its design   since 2012 under Certificate N° 5267 in class 18 (design used in handbags)  .

 

These tools (Industrial designs and Trademarks), in addition to the copyright, provide protection to the creators, designers and owners in the fashion industry within the Fashion Law who, depending on the product, should file the corresponding application for registration in order to be protected against any unauthorized use by third parties .

 

ESTUDIO COLMENARES & ASOCIADOS

The Peruvian Patent Office (Direction of Inventions and New Technologies – INDECOPI), depending on the type of invention to be protected, includes three modalities: Patents of Invention, Utility Models and Designs, which differ in the type of creation, evaluation mode and protection time.

Difference between Patents of Invention and Utility Models: Patents of Invention protect products and processes that comply with an inventive step to solve a technical problem that had not been solved, on the other hand, for Utility Models the evaluation consists in the new form incorporated to the object, providing a technical advantage to the original element.

Utility Models are intended to protect any new shape, configuration or arrangement of elements, of any artifact, tool, instrument, mechanism or other object or a part thereof, allowing a better or different operation, use or manufacture of the object which incorporates or provides certain usefulness, advantage or technical effect that it did not have previously (Decision 486 – Article 81). Consequently, only claims of category of product can be protected by this modality, being the most relevant criteria for its protection novelty and technical advantage. The Patent of Utility Model does not require an analysis of inventive step, as in the case of a Patent of invention, but it is sufficient to demonstrate that the new form granted to the claimed product confers a technical advantage over what is described in the prior art.

Designs protect the particular appearance of a product resulting from any joining of lines or combination 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 (Decision 486 – Article 113). Designs must comply mainly with the criterion of novelty. The Peruvian Patent Office does not carry out an ex officio novelty examination unless the design manifestly lacks novelty or when there is an opposition to the registration of the design during the procedure (Article 124 of Decision 486).

The following are some relevant characteristics of Utility Models and Designs in Peru:

 

Utility Model Design
Definition Any new form, configuration or arrangement of elements, of an artifact, tool, instrument, mechanism or other object or a part thereof, allowing a better or different operation, use or manufacture of the object incorporating or providing it with any usefulness, advantage or technical effect that did not previously have. The particular appearance of a product resulting from any joining of lines or combination of colors, or any two-dimensional or three-dimensional external shape, line, contour, configuration, texture or material, without changing the destination or purpose of product.
Criteria for registration – Novelty

– Technical Advantage

-Novelty
Processing time 2-3 years 6-9 months
Protection time 10 years 10 years
Renewal and Maintenance Not aplicable Not aplicable

 

Design Sample: Candy container

 

Utility Model Sample: Ice bucket with lid that allows to easily remove the ice cubes.

 

 

 

 

 

We inform you that on June 29, 2017 it was published in the Official Journal “El Peruano” , Legal Rules Section (pages 8-10), the Supreme Decree 071-2017-PCM which implements the electronic publication for trademark applications and other elements of Industrial Property (Patents of Invention, Utility Models and Industrial Designs) in the Gazette of the Trademark Office (INDECOPI), which came into force on June 30, 2017.

Article 5 states that the publication in the Electronic Gazette of INDECOPI is made on a daily basis and is available, in a permanent way and free through the institutional web portal of INDECOPI.

This new procedure decreases the cost of the process of registration engendered by the publication and allows the users to obtain their registrations in a fast and efficient way. Likewise, it facilitates the access to the information regarding the administrative proceedings of registration.

SOURCE: Diario Oficial ”El Peruano” de fecha jueves 29 de junio de 2017, Sección NORMAS LEGALES, Página desde 8 a 10.