|August 2, 2012|
On may 15th 2012, the FTA between Colombia and the US entered into force. The negotiations of this FTA were characterized by strong discussions on Intellectual Property issues and deep modifications for Colombian IP Law. This is a brief of the most important of these modifications and their implications for our IP market.
Chapter 16th of the FTA, dedicated to IP, is the lengthiest of the agreement, and its negotiations had to deal with profound differences between US and Andean law. Many of the clauses agreed upon will have to be carefully examined and legal disputes will surely arise as these legal systems collide on patent, trademark and copyright issues.
International legal frame.
The first issue regulated by the FTA is the international legal frame for the agreement. Article 16.1 contains an obligation for the parties to approve several WIPO treaties, the Patent Cooperation Treaty, the Trademark Law Treaty, the Patent Law Treaty and the Madrid Protocol; among many others.
These were conditions established by the US, since it is already party to most of these instruments. Colombia has started fulfilling such requirements by approving the Madrid Protocol (which has not yet entered into force) and reforming its regulation on procedures to abide by international standards, mainly through Resolution 21447 of the national PTO. Many other instruments had already been approved by Colombia.
Other conditions set on this section, are the national treatment for all IP protection, the non-retroactivity of the FTA conditions and the voluntary expansion of the protection rules set in the agreement.
Trademarks and distinctive signs.
On this issue, several of the FTA’s rules were already fulfilled by both parties. Modifications on these issues include:
-The requirement for an electronic application system for most procedures, and the creation of a public database for applications and registered trademarks. Resolution 21447 of the national PTO has already adopted many of these requirements in easing the procedures for filing documents through electronic means.
-The permission of licensing without previous registry of the trademark. Such article is conflicted with decision 486 and 291 of the Andean Community; such conflict is yet to be resolved.
-Geographical Indications will not have primacy over trademarks, the first distinctive sign will prevail over the other on a first registered basis. Issues were also raise about the registration of geographical indications as certification or collective trademarks; the FTA states that Colombia and Peru will have to accommodate to such situation, registering G.I. as trademarks when necessary.
-The US advocated for an expansion on patent law, increasing the possibilities for what’s patentable. Specifically, the US wanted to make plants, animals, uses of known substances (Second-use patents) and medical treatments patentable. This goal was only partially accomplished, since Colombia and Peru only agreed to make reasonable efforts on patents for plants.
-Rules were established for the “Unreasonable delay in granting a patent”. According to negotiations conducted in 2006, the parties had to ‘restore’ the patent’s time when the PTO Office took more than 5 years in granting or rejecting a patent. Modifications to this agreement, made this article a voluntary measure for both parties since 2007.
This same -softened- rule will be applied to pharmaceutical products when the sanitary inspection was unreasonably delayed in approving or rejecting a product.
-Some agreements remain unclear, such as the one referring to the necessary divulgation of the invention when application for patentability is filed. The standard adopted to determine what is considered to be ‘sufficient divulgation’ is ambiguous and different from both the American and Colombian regulation.
This requirement is established to ensure that the applicant was in ‘full possession’ of the patentable matter at the moment of filing, and to allow other inventors to take advantage of the technical improvements brought about by the patented invention.
Under the FTA, sufficient divulgation will be met when an expert in the same field would consider the applicant to be in possession of the invention at the time of the filing. This is a standard hard to accommodate to both national legislation and its practical application is yet to be seen.
-Other changes to requirements for patentability include the ‘usefulness of the invention’. Colombian regulation required the invention to have an industrial application. The US required the invention to be ‘useful’, even if the use was not yet known. And Andean Community regulations required an industrial application and to be ‘useful’.
The FTA has adopted the American standard, requiring the usefulness of the invention as criteria to establish its industrial application.
-Additional modifications include changes to the grounds for the annulment of patents, exceptions to patent rights, and issues with commercialization licenses when patent rights were violated.
Copyright and author’s rights.
Copyright and Author’s right issues were the most publicized and controversial topics in public forums. Colombia’s legislative reforms to fulfill the obligations of this FTA usually extended protection beyond what was demanded by the bilateral agreement and were faced with strong opposition from citizen organizations and the Academia.
The most important of these modifications are:
-The protection for works when the owner is a corporation was extended to 70 years since the date of publication (20 years more than the Andean Community standard).
-The owner of related-rights will have an exclusive right on the publication of their work through digital means. The same exclusive right is established for the re-transmission of TV signals on the internet (which is a higher protection standard than that of the US).
-The temporal storage in electronic form of copyrighted works may be prohibited by the author. This raises questions about the enforcement of copyright in ‘digital lockers’ such as MediaFire and RapidShare, but it also concerns other services for online storage of files, such as Box, Dropbox, and the recently launched Google Drive. Experience in copyright issues says that these enforcement issues will be neglected or simply impossible to apply (since anybody could be a potential infringer), but Colombia is sure to have a greater pressure from the US to prosecute infringement of copyright through digital means.
-The owners of any economic right in a work, performance or phonogram may freely and separately transfer their rights, and they also have the possibility to actively enforce their rights on the work.
-Regulation is established for technological measures protecting IP rights and including new exceptions allowing the breaking of such measures.
-A presumption was established for litigation, in favor of the person who appears as the owner of the work and the owners of different parts of the work (such as artists, editors and broadcasting companies).
-The obligation to regulate the use of software by the government, making sure that no illegal software is used by government agencies.
Since many of the clauses agreed upon in the FTA are openly opposed to Andean Community regulations, the implementation of the Agreement is sure to be controversial and to raise interesting questions for IP Experts from both countries.
B&R Latin America will be reporting on developments on this FTA, and will advise its clients accordingly. This is a both exciting and challenging issue for this Latin American economy, and will surely impact the Andean Community market on IP.
“El tema Propiedad Intelectual las negociaciones del TLC Colombia - Estados Unidos” - Universidad Sergio Arboleda.
Full text of the FTA in English.
Full text of the FTA in Spanish.
“Colombia and the United States: A Successful Trade Alliance” - Embassy of Colombia in Washington D.C.
FTA’s web page of the Ministry for Commerce, Industry and Tourism.