Patents

Under the Andean Community Provisions, Patents shall be granted for inventions (goods or processes), provided that they are new, involve an inventive step and are industrially applicable.

Novelty:

Dec. No. 486 establishes that an invention shall be considered new when it is not included in the state of the art. For Dec. 486, “state of art“ comprises everything that has been made available to the public by written or oral description, by use or marketing or by any other means prior to the filing date of the patent application or, where appropriate, the recognized priority date.

The contents of the patent application pending before the competent national office with a filing or priority date earlier than the priority date of the patent application under examination shall likewise be considered part of the state of the art solely for the purpose of determining novelty, provided that the said contents are included in the earlier-dated application where it is published, or where it is declared public after the 18-months period for an application to be declared as so.

Also, the Dec. 486 contemplates a grace period, which establishes that no account shall be taken of any disclosure that occurs during the year prior to the filing date of the application in the member country, or during the year before the priority date if priority has been claimed, provided that such disclosure is attributable to

(i) the inventor or his successor in title;

(ii) the competent national office which, in violation of the provisions applicable, publishes the contents of the patent application filed by the inventor or his successor in title; or

(iii) a third party who has obtained the information directly or indirectly from the inventor or his successor in title.

All of the above, for the purposes of determining patentability.

Involve an inventive step:

An invention involves an inventive step if, for a person in the trade with average skills in the technical field concerned, the said invention is neither obvious nor obviously derived from the state of the art. Other regimes, as the one applicable to the United States, consider a requirement of nonobviousness rather than an “inventive step” requirement, as will be mentioned afterwards.

Are industrially applicable:

An invention is considered industrially applicable when its subject matter may be produced or used in any type of industry.

Industry shall be understood as that involving any productive activity, including services. However, this rule has some exceptions. Under Dec. 486, the following cannot be considered inventions:

• Discoveries
• Scientific theories
• Mathematical methods
• Living beings as encountered in nature
• Biological material existing on nature or which may be isolated (including the genome or germplasm of any natural living being)
• Literary and artistic works or any other work protected by copyright
• Plans, rules and methods for the pursuit of intellectual activities, the playing of games or the conduct of economic and business activities
• Computer programs or software as such
• Methods of presenting information

Additionally, some inventions cannot be protected under the regime . The non-patentable inventions are:

• The inventions whose commercial exploitation has to be prohibited in order to protect law and order or morality on the territory of the member country concerned.
  • The commercial exploitation of an invention shall not be considered contrary to law and order or morality solely owing to the existence of a legal or administrative provision that prohibits or regulates such exploitation.
• The inventions whose commercial exploitation has to be prohibited in order to protect the health or life of persons or animals, or to preserve plants or the environment.
  • The commercial exploitation of an invention shall not be considered contrary to the health or life of persons or animals or liable to prejudice the conservation of plants or the environment solely on account of the existence of a legal or administrative provision that prohibits or regulates such exploitation.
• Plants, animals and essentially biological processes for the production of plants or animals that are not non-biological or microbiological processes.
• Therapeutic or surgical methods for the treatments of human beings or animals, and also diagnostic methods applied to human beings or animals.

Products or processes that are already patented and included in the state of the art (within its aforementioned meaning), may not form the subject matter of a new patent owing to the fact of having a use ascribed to them different from that originally provided for in the first patent.