Patent Term Extensions and Restoration under Costa Rican Legislation
March 17, 2009 By Asesores Legales en Propiedad Industrial
This article discusses TRIPS-plus provisions in Costa Rican patent law, granting patent holders the possibility to request term extensions and restoration as a result of delays in the registration process or relating to effective patent term loss due regulatory approval of certain pharmaceutical products.
Patent term extension or restoration provisions are an important form of protection for inventors and patent holders in order to prevent effective patent term loss due to administrative bureaucracy and delays. Legislative authorities have come to realize that this is an important component in achieving the goal of fostering innovation within the scheme of intellectual property rights protection.
The normal protection term provided by Costa Rican legislation for patents of invention is 20 years as of the date of filing of the application or the international filing date for PCT applications. Considering that registration process before the Patents Office can take multiple years and, that in the case of pharmaceutical products, these have to undergo an additional approval process before the country’s health authorities, the term of protection can be lessened considerably. This limits the ability of the holder to make, use, license or sell their inventions.
Costa Rican legislation does indeed provide extensions or restoration as of November of 2008. In fact, these are novel TRIPS-plus provisions introduced late last year as a result of obligations under the Intellectual Property Chapter of the Dominican Republic - Central America - United States Free Trade Agreement (DR-CAFTA).
Currently, the amended Patent Law states that extension or restoration can be requested under two distinct sets of circumstances:
1) Delay in Registration by the Patents Office:
If granting of the patent application by the Patents Office takes longer than 5 years as of the date of filing or more than 3 years from the date in which substantive examination is requested, the applicant may request an extension of the term equal to each day of delay, but in no case exceeding 18 months.
For example, if granting took 5 years and 30 days as of the date of filing, the applicant would be entitled to a 30-day extension. If the delay took 2 years, the extension would be granted for only 18 additional months.
In order to calculate the term of the extension, any delays caused by the applicant’s action or inaction are not taken into account.
2) Delay in approval for commercialization by the Ministry of Health for pharmaceutical products:
In case approval of the sanitary registration by the Ministry of Health in order to begin commercialization of the pharmaceutical product protected by a patent takes longer than 3 years as of the date of filing the application for sanitary registration, the applicant may request to the Patents Office an extension of the patent's validity term, provided that the request is filed within 3 months as of the date of approval of the sanitary registration.
The extension would be equal to each day of delay; as long as the patent’s outstanding validity does not exceed 12 years. Nevertheless, the extension may not exceed 18 months overall.
The Patents Law does not explicitly state what would happen if the patent's validity exceeds 12 years after delayed approval by the Ministry of Health. However, it seems that no extension would be granted in this case.
These two cases are the only ones currently contemplated under the Costa Rican Patents Law for extension of restoration of the patent term. However, it is also important to note that there is an applicable fee payable to the Patents Office as a result of any extension request, regardless of whether it is granted or not. The application for extension or restoration of the patent term must pay official fees in the amount of US150.00 per request, plus any additional fees charged by the filing agent in charge of the applications prosecution. This is but a small cost when compared to the benefits that can be reaped for prolonging the duration of exclusive protection of a valuable invention.
ABOUT THE AUTHOR: Luis Diego Acuna
Luis Diego Acuña is an attorney at Asesores Legales en Propiedad Industrial, S.A., a business and commercial law firm based in Costa Rica. Luis Diego is a corporate/commercial lawyer specialized in working with foreign companies in their investments into and concerning China and Latin America, namely in the Intellectual Property field. You may contact Luis Diego at ldacuna@acunalegal.com.
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More information about Asesores Legales en Propiedad Industrial
Disclaimer: While every effort has been made to ensure the accuracy of this publication, it is not intended to provide legal advice as individual situations will differ and should be discussed with an expert and/or lawyer. For specific technical or legal advice on the information provided and related topics, please contact the author.
The normal protection term provided by Costa Rican legislation for patents of invention is 20 years as of the date of filing of the application or the international filing date for PCT applications. Considering that registration process before the Patents Office can take multiple years and, that in the case of pharmaceutical products, these have to undergo an additional approval process before the country’s health authorities, the term of protection can be lessened considerably. This limits the ability of the holder to make, use, license or sell their inventions.
Costa Rican legislation does indeed provide extensions or restoration as of November of 2008. In fact, these are novel TRIPS-plus provisions introduced late last year as a result of obligations under the Intellectual Property Chapter of the Dominican Republic - Central America - United States Free Trade Agreement (DR-CAFTA).
Currently, the amended Patent Law states that extension or restoration can be requested under two distinct sets of circumstances:
1) Delay in Registration by the Patents Office:
If granting of the patent application by the Patents Office takes longer than 5 years as of the date of filing or more than 3 years from the date in which substantive examination is requested, the applicant may request an extension of the term equal to each day of delay, but in no case exceeding 18 months.
For example, if granting took 5 years and 30 days as of the date of filing, the applicant would be entitled to a 30-day extension. If the delay took 2 years, the extension would be granted for only 18 additional months.
In order to calculate the term of the extension, any delays caused by the applicant’s action or inaction are not taken into account.
2) Delay in approval for commercialization by the Ministry of Health for pharmaceutical products:
In case approval of the sanitary registration by the Ministry of Health in order to begin commercialization of the pharmaceutical product protected by a patent takes longer than 3 years as of the date of filing the application for sanitary registration, the applicant may request to the Patents Office an extension of the patent's validity term, provided that the request is filed within 3 months as of the date of approval of the sanitary registration.
The extension would be equal to each day of delay; as long as the patent’s outstanding validity does not exceed 12 years. Nevertheless, the extension may not exceed 18 months overall.
The Patents Law does not explicitly state what would happen if the patent's validity exceeds 12 years after delayed approval by the Ministry of Health. However, it seems that no extension would be granted in this case.
These two cases are the only ones currently contemplated under the Costa Rican Patents Law for extension of restoration of the patent term. However, it is also important to note that there is an applicable fee payable to the Patents Office as a result of any extension request, regardless of whether it is granted or not. The application for extension or restoration of the patent term must pay official fees in the amount of US150.00 per request, plus any additional fees charged by the filing agent in charge of the applications prosecution. This is but a small cost when compared to the benefits that can be reaped for prolonging the duration of exclusive protection of a valuable invention.
ABOUT THE AUTHOR: Luis Diego Acuna
Luis Diego Acuña is an attorney at Asesores Legales en Propiedad Industrial, S.A., a business and commercial law firm based in Costa Rica. Luis Diego is a corporate/commercial lawyer specialized in working with foreign companies in their investments into and concerning China and Latin America, namely in the Intellectual Property field. You may contact Luis Diego at ldacuna@acunalegal.com.
Copyright Asesores Legales en Propiedad Industrial
More information about Asesores Legales en Propiedad Industrial
View all articles published by Asesores Legales en Propiedad Industrial
Disclaimer: While every effort has been made to ensure the accuracy of this publication, it is not intended to provide legal advice as individual situations will differ and should be discussed with an expert and/or lawyer. For specific technical or legal advice on the information provided and related topics, please contact the author.
