Legislative Decrees No. 1391 and No. 1397 –published on September 5 and 7, respectively – modified certain provisions of the Organization and Function Laws of INDECOPI, of Legislative Decree No. 1075 which approves complementary provisions to Decision 486 of the Andean Community Commission, of the Copyright and Neighboring Rights Law approved by Legislative Decree No. 822 (hereinafter Legislative Decree No. 822), and of the Interpreter and Performer Artist Law – Law No. 28131.
The main modifications are the following:
I. In the field of Inventions, Industrial Designs and Layout Designs of Integrated Circuits
1. Divisional applications and claims.
It is established that it is possible to divide the applications for industrial designs, which was already done in practice although it was not formally stated in the legislative text. Moreover, it is stated (i) that the authority can order the division of an application if it contains more than one design; (ii) that the divisional application benefits from the filing date and priority date of the parent application; and, (iii) that the applicant must submit all the necessary documents for filing the applications.
Moreover, it is established that a divisional application will not be admitted for prosecution if the protection scope of the parent application is not effectively divided between the parent application and the divisional application, the scope of them having to be duly differentiated at the time of filing the divisional application.
2. Service of the patentability examination
It is clarified that any new examiner’s objection must be served on the applicant. Therefore, if a clarity objection has been raised and again clarity is objected based on a different argument or reason which was not previously communicated, then applicant must be served with a new report.
This clarification is positive since it establishes that any new objections of the examiner must be communicated to applicant. Therefore, if a clarity objection has been already communicated and again the clarity is objected based on a different argument or reason which was not previously communicated, then applicant must be served with a new technical report.
If any of the opposition filing requirements is not met, a two (2) working day term will be granted for rectification, otherwise the opposition will be considered as not presented. Among the requirements, the factual and legal grounds of the opposition (paragraph d) must be filed, as well as the means of proof that demonstrate the alleged facts (paragraph e); nevertheless, according to Decision 486 the opponent can ask for 60 additional working days to file supporting evidence for the opposition. This term is used by the opponent to present more arguments (paragraph d) and background documents of the opposed application (paragraph e). The most probable is that no conflicts arise with respect to what is established by Decision 486.
Moreover, an article has been included which establishes that it is not necessary that the opponent has filed evidence supporting its arguments or that applicant has answered the opposition to consider the opposition stage to be concluded
4. Inventions developed under a work relationship or service contract and in research centers and regulation about reinvestment for research.Before the recent modification, Articles 36, 37 and 38 of Legislative Decree No.1075 established the ownership of rights over the invention in the case of inventions developed under a work relationship or service contract, as well as inventions developed in education and research centers, and the adequate compensation attributable to the inventors in each case, only in the fields of patents and utility models. Now these rules have been modified and are applicable not only to patents and utility models but also to industrial designs and layout designs of integrated circuits. It is worth mentioning that before these modifications, although there was not an express rule in this regard, this criterion was already applied to applications for the registration of industrial designs (it was not applied to layout designs of integrated circuits because there were not applications or registrations of said industrial property elements).
II. In the field of Distinctive Sign Rights
1. Incorporation of geographical indications and traditional specialties guaranteed as constituent elements of the industrial property.
Geographical indications and traditional specialties guaranteed are included as constituent elements of the industrial property.
Consequently, the constituent elements of the industrial property are:
a) Invention patents;
b) Protection certificates;
c) Utility model patents;
d) Industrial designs;
e) Entrepreneurial secrets
f) Layout designs of integrated circuits
g) Trademarks and service marks;
h) Collective trademarks
i) Certification trademarks
j) Trade names
l) Denominations of origin; and
m) Geographical indications;
n) Traditional specialties guaranteed.
Before the modification, geographical indications were already considered in the Andean legislation including among them: (i) the denominations of origin and (ii) the indications of source. Nevertheless, the geographical indications were not expressly mentioned in the INDECOPI regulations, so the instant modification was completed to expressly include the geographical indications among the constituent elements of the industrial property recognized by Legislative Decree No. 1075.
The traditional specialties guaranteed were not considered in the legislation, which constitutes a novel figure in the Intellectual Property field. This modification specifies that traditional specialties guaranteed seek to protect traditional recipes, methods of production or transformation that correspond to the traditional practice applicable to a product or food, thus contributing to give added value to traditional products in their commercialization, production or transformation and to inform consumers of their attributes.
Finally, it is established that the Head Office of Distinctive Sings of INDECOPI will be the competent entity to know and decide in first instance everything relating to geographical indications and traditional specialties guaranteed.
2. Undue use of denominations such as “Denomination of Origen”, “D.O.” or other equivalent.
It is established as infringement of Industrial Property rules, the use of denominations such as “Denomination of Origin”, “D.O.” or other equivalent which do not have denomination of origin or for which the corresponding authorization of use has not been obtained before the competent entity. The modification simply widens the prohibition of using symbols or expressions such as “Marca Registrada”, “M.R.” or other equivalent together with marks which do not have the corresponding registration before the competent authority, so that the prohibition is now applied mutatis mutandis to Denominations of Origin.
III. In the field of Copyrights
1. Controversy between the authors of a joint work with respect to the exercise of rights in the work.
In proceedings regarding the controversy between the authors of a joint work with respect to the exercise of rights in the work, the term for filing the appeal brief against the resolution that solved the disagreement is extended from five to fifteen days to put it on the level with the ordinary term for filing appeal briefs in other administrative proceedings.
2. Widening of the scope of the Moral Right of Integrity of the author.
The concept of “Moral Right of Integrity” of the author is widened to comprise the right of the author to oppose against the destruction of the work, right which can be exercised even against the acquirer of the material object which contains the work. In the past, the right of the author to oppose against the destruction of the work was not contemplated.
3. Limitation to the right of reproduction of the work for the purpose of teaching or conducting tests at teaching institutions.
The modification consists in widening the limitation to the reproduction right, so that it also comprises the reproduction by digital media or others similar and also covers the speeches, original phrases, unitary poems or complete isolated plastic or photographic works, on the condition that said use is made pursuant to fair practice, which implies the obligatory citation of the author and always under the rule that said reproduction is not object of sale or other onerous transaction, neither has it direct or indirect profit purposes.
4. Fees and directory of national and foreign right owners administered by collective management organizations.
It is widened the obligation of the collective management organizations of keeping at users’ disposal, in the carriers said organizations use in their management activities, the fees and directory of national and foreign right owners, for consultation at their web pages and/or their branch offices. Before this modification, such obligation was limited to the main offices of said organizations and did not include the obligation of uploading the information at the web pages of said organizations.
5. Publication of the resolution by which the authorization of operation of the collective management organizations is granted or denied.
It is widened the obligation of publishing at the institutional web page of INDECOPI, the resolution by which the authorization of operation of the collective management organizations is granted or denied. Likewise if it is a denying resolution, the interested party will be served with the resolution and said resolution will be published at the institutional web page of INDECOPI.
6. Egalitarian vote instead of qualified vote in the elections of the management, performance and vigilance bodies of the collective management organizations.
The voting system of the collective management organizations is modified. Now the vote is egalitarian instead of qualified and the qualified vote has become exceptional.
7. Management, performance and vigilance bodies of the collective management organizations.
It is established that the only management, performance and vigilance bodies of the collective management organizations will be the General Assembly, the Board of Directors and the Vigilance Committee. In the past, the by-laws of the collective management organizations could establish the existence of other bodies with various powers.
8. Specification of obligations of the collective management organizations
Some obligations of the collective management organizations are specified as to the preparation and approval of their income and expenses, approval of administrative expenses not considered in the approved budget, approval of pre-operative expenses in recently incorporated entities and maintaining a periodic publication addressed to their associates with the information relating to the activities of the organization including, at least, the financial statements of the organization, the auditors’ report and the text of the resolutions adopted by its management bodies. The modifications include allowing the General Assembly to authorize the expenses that are not initially contemplated in each budget, without exceeding the limits stated, a right which was before kept for the Board of Directors. On the other hand, it is specified that the scope of the concept “assets” comprises property, plant and equipment or intangible assets. Finally, the concept of pre-operative expenses incurred before the start of the invoicing is included, which will be recognized as administrative expenses for the maximum term of ten (10) years. The latter is something new since previous legislation did not contemplate the treatment of the pre-operative expenses for the installation and putting into operation of the collective management organization. In the rest of the modifying articles, the only modification is to substitute the expression “general balance” for the expression “financial statements” and the term “partners” for “associates”; the remainder of the text being the same.
9. Challenge of tariffs for the use of directories of the collective management organizations by unions or representative groups of users.
The process by which a union or a representative group of users can challenge the incorrect application of tariffs for the use of directories of the collective management organizations is modified by substituting the prior Arbitral Commission for the Copyright Commission of INDECOPI, and the limit of time for filing an action challenging said incorrect application of tariffs is eliminated, which before was possible only if the action was filed within thirty working days following the application of the tariff.
10. Payment of accrued remunerations in the fields of Copyright and Neighboring Rights.
It is specified that the payment of accrued remunerations extends to those resulting from infringements of neighboring rights, although in practice it was already being done by reference to the application of copyright rules to neighboring rights, if applicable. The amount of accrued remunerations is established according to the value that the owner of the right or the company that represents it, if authorized for exploitation, would have received. The payment of said remunerations in no case will mean the acquisition of the copyright or neighboring right by the infringer. Consequently, the infringer will not be exempted from the obligation of regularizing its legal situation, thus obtaining the corresponding authorization or appropriate license.
IV. In the field of the Interpreter and Performer Artist Law
1. Specification of the concept of Interpreter and Performer Artist
It is clarified the concept of Interpreter and Performer Artist specifying that it comprises every person representing or performing a literary or artistic work or folklore expression, with or without text, using his/her body or abilities, with or without instruments, which are performed or shown to the public, resulting in an interpretation and/or performance able to be broadcasted by any media or fixed on a suitable computer software, created or to be created.
The modification consists in specifying the definition of the concept of “interpreter and performer artist” to further include every person representing or performing a literary work or folklore expression. The former text only relates to every person representing or performing an artistic work, which was imprecise.
2. Application to infringements of neighboring rights of the same sanctions established for copyright infringements
It is specified that the same sanctions established for infringements of copyrights will be applied to infringements of neighboring rights; although in practice it was already being done by reference to the application of copyright rules to neighboring rights, if applicable.
V. In the Procedural Field
1. Proceedings before the Court of INDECOPI
Several aspects of proceedings before the Court of INDECOPI are regulated, among them, specifying on the processing of concurrence appeals and establishing that, by answering the service of the appeal, the answering party will be able to concur in the appeal and that this will be informed to the appellant party within a 15-working day term. Likewise, it is expressly mentioned that, failure to answer the appeal or concurrence is not considered a judgment element against the situation of the party not answering the appeal or concurrence. In the same way, it is mentioned that the Court has a maximum term of 180 working days to issue a decision on the appeals and it is stipulated that once the case file enters the deciding stage, understanding for this stage the moment in which a written decision is issued establishing that the proceeding enters this stage, no longer can be submitted briefs, appeals and new means of proof, the same that will not be taken into account when rendering a decision since the procedural stage for their submission has already concluded. These rules are applicable, if appropriate, to proceedings before the Head Offices, and in the case of the invention patent applications they have very important effects since it will not be possible to answer the last technical report once the written decision is issued ordering that the proceeding enters the deciding stage (former rules allowed answering the last technical report within a 6-working day term). The idea of the modification is to accelerate the process of analysis of files establishing a procedural preclusion in the processing of the proceeding. Finally, it is established that it is inadmissible the return of the official notices of court decisions delivered at the last domicile provided by the parties, arguing that (i) said domicile no longer belongs to said parties or (ii) that it has been a change of the representative; and that the notices delivered at said domicile have full legal effects since the parties are responsible for informing the Authority the changes of domicile and/or representative.
2. Decisions issued by the Intellectual Property Specialized Division of the Court of INDECOPI exhaust the administrative instances and cannot be challenged at administrative offices.
It is specified that administrative instances are exhausted with the Decisions issued by the Intellectual Property Specialized Division of the Court of INDECOPI and they can only be challenged through contentious administrative proceedings. Therefore, the documents submitted by the parties at the administrative offices aiming at challenging the enforceability or grounds of said decisions are not admitted, without prejudice to the power of the Court to declare, at its own initiative, null and void its own decisions. The modification is simply to indicate that petitions aiming at challenging the enforceability or grounds of the decisions taken by the Intellectual Property Specialized Division of the Court of INDECOPI will be declared groundless, while the former legislation made reference to their inadmissibility. Therefore, the modification aims at a legal disquisition that differentiates inadmissibility from lack of legal basis but which in practice seems to have the same effects in the sense that it is administratively impossible to challenge the decisions of last administrative instance issued by the Intellectual Property Specialized Division of the Court of INDECOPI, thereby avoiding unmotivated dilation of the proceedings.
3. Expiration of the Precautionary Measures
It is established that the precautionary measures issued during infringement actions against Intellectual Property rules expire with the final decision given for said action, unless the complaint would have been declared groundless by the first instance, in which event they will expire with the issuance of said decision. Formerly, the expiration of the precautionary measures solely occurs with the first instance’s decision.
4. Maximum term for the processing of infringement actions against copyrights and neighboring rights.
A maximum term of one hundred and twenty (120)-working days is established for the processing of infringement actions against copyrights and neighboring rights, without prejudice to what is established in special rules. This is a novelty. Obviously it is an ideal term that we hardly believe will be met.
5. Stay of the proceeding.
An article is added to establish that the competent authority will stay the processing of the proceeding brought before it only in the event that, previously to the beginning of the administrative proceeding a judicial action has been brought on the same subject, or when a contentious or non-contentious matter arises which at the criterion of the respective competent authority needs a previous decision without which the matter brought before said authority cannot be decided. The modification specifically regulates the cases of stay of the processing of infringement actions related to copyrights and neighboring rights; however, this rule was already being applied as supplement to general administrative proceeding rules.
6. Procedural Preclusion in the processing of infringement actions against copyrights and neighboring rights brought before the Intellectual Property Specialized Division of the Court of INDECOPI
It is added an article to establish that in the processing of infringement actions against copyrights and neighboring rights brought before the Intellectual Property Specialized Division of the Court of INDECOPI, articles 136,136-A, 136-B and 139 of Legislative Decree 1075 will be applied, which establish that once the case file enters the deciding stage, understanding for this stage the moment in which a written decision is issued establishing that the proceeding enters this stage, no longer can be submitted briefs, appeals and new means of proof, the same that will not be taken into account when rendering a decision since the procedural stage for their submission has already concluded. The idea of the modification is to accelerate the analysis process of the files by establishing a procedural preclusion in the processing of actions.
7. Appeals and Petitions for Reconsideration in the case of invention patent rejections.
It is established that the appeals and petitions for reconsideration cannot be based on amendments of the specification, claims or drawings; nevertheless, it is worth mentioning that this criterion was being applied in many court of appeals’ decisions.
8. Technical Report of the Head Offices of Inventions and New Technologies, Distinctive Signs and Copyright of INDECOPI in criminal cases
It is established that in the crimes against industrial property and copyright and neighboring rights, prior to the District Attorney’s accusation or opinion, as appropriate, the competent Head Office of INDECOPI, at the request of the District Attorney, will issue a technical report within a five(5)-working days term. Said technical report does not has the status of an expert`s document or testimony, not being subject to ratification on the part of the officer issuing the report. Formerly, the District Attorney was forced to order the technical report from the competent Head Offices of INDECOPI before making its accusation or giving its opinion. With the modification this becomes optional and it is specified that the technical report does not has the status of an expert’s document or testimony, neither is it subject to ratification on the part of the officer issuing the report, thereby simplifying the performance of the District Attorney as responsible for the criminal action.