Rights:
Under the Andean Decision No. 486, the grant of a Patent confers to the owner a series of rights. Those rights are:
Term of protection: The invention will be protected for 20 years from the filing date of the application.
Scope of protection: What is protected is determined by the content of the claims, using the description, drawings and any biological material deposited for their interpretation.
Rights conferred: A patent shall confer on its owner the right to prevent third parties to engage any of the following acts without his consent:
- Where the patent claims a product:
- Manufacturing the product
- Offering the product for sale, selling or using it, or importing it for any of those purposes
- Where the patent claims a process:
- Using the process
- Carrying out any of the acts aforementioned in relation to a product obtained directly by means of the process.
Exceptions:
A Patent may not confer the rights referred previously for…
- Acts performed in a private circle for non-profit-making purposes
- Acts performed for exclusively experimental purposes on the subject matter of the patented invention
- Acts performed solely for the purposes of teaching or scientific or academic research
- Acts referred to in Article 5ter of the Paris Convention for the Protection of Industrial Property
Paris Convention, Article 5ter: Patents: Patented Devices Forming Part of Vessels, Aircraft, or Land Vehicles.
Additionally, where the patent protects biological material that can be reproduced other than plants, using that material as the basis with which to obtain viable new material does not constitute an infringement of a Patent, except where, to do so, the repeated use of the patented subject matter is required.
A Patent shall not confer the right to prohibit a third party from engaging in commercial acts in relation to a product protected by the patent after that product has been brought on to the market in any country by the owner of the patent, or by another person who has obtained his consent or is economically associated with him.
Art. 54, Andean Decision No. 486.
The patent shall not extend to the biological material obtained by reproduction, multiplication or propagation of the material that has been brought to the market, provided that
- The reproduction, multiplication or propagation was necessary so that the material might be used to achieve the purposes for which it was brought on to the market, and
- That the material derived from such use is not used for multiplication or propagation purposes.
The rights conferred by the patent may not be asserted against a third party who, in good faith, before the priority date or filing date of the application on which the patent was granted, was already using or exploiting the invention or had made real or effective preparations for such use.
The said third party shall have the right to start or continue the use or exploitation of the invention, but that right may only be assigned or transferred together with the establishment or business in which the use or exploitation was taking place.
Transference of Rights:
Both a granted or a pending patent may be transferred by an inter vivos transaction or by succession. Any transfer of a granted patent shall be registered with the competent national office. Failure to register shall cause the transfer to be unenforceable against third parties.
The transfer shall be evidenced in writing for the purposes of registration, and any interested party may seek the registration of a transfer.
Licenses:
Also, the owner of a granted or pending patent may license the working of the invention concerned to one or more third parties. The license shall be registered with the competent national office; otherwise, the license will be unenforceable against third parties. For the purposes of registration, the license shall be evidenced in writing, and, as above, any interested party may apply for the registration of a license.
If there has been a change in the name or address of the owner of the patent in the course of the term of the license contract, the owner of the registration shall inform the competent national office accordingly. If that is not done, any notification effected according to the particulars appearing in the register entre shall be valid.
The competent national authority shall not register license contracts for the working of patents that do not conform to the Common Provisions on the Treatment of Foreign Capital and Trademarks, Patents, Licenses and Royalties (Dec. No. 291/91), or do not conform to Community or national provisions on business practices that restrict free competition.
Obligations:
The owner on the patent must exploit the patented invention in any member country, either directly or through a person authorized by him.
“Exploitation” shall be understood to mean:
- The industrial manufacture of the patented product or
- The full use of the patented process, including:
- The distribution and marketing of the results thereof, in a manner sufficient to meet the needs of the market.
- The import of the patented product, including distribution and marketing, where it is done on a scale sufficient to meet the needs of the market.
Where the patent relates to a process that does not result in a product, “marketing” and “distribution” requirements shall not be enforceable.
