Intellectual Property Protection in Costa Rica

Transcript:

Hello.  How are you?  Welcome.

Mauricio Bonilla:  Hello.  Thank you.  It is great to be here.

The Central American Group:  Thank you very much.  Today we are going to talk about intellectual property protection in Costa Rica.  Before we start that conversation, however, could you tell us a little bit about yourself and your company?

Mauricio Bonilla:  Sure.  Thank you.  As I said, it is a pleasure to be here.  Advice Legal Studio is a full-service firm that has been in existence for approximately six years.  We assist and work with clients from all over the world in the areas of corporate intellectual property, labor and immigration law, and so on.  Basically, we have a full-service firm.   We are six partners.  We try to think that we are a law firm that partners with clients in order to not only assist them in legal matters but also partner with them in all their dealings in Costa Rica.  We are here to assist them in any legal matter that they need.

The Central American Group:  Before we talk about intellectual property protection in Costa Rica, could you give us a general overview of what the situation is on this topic?

Mauricio Bonilla:  Yes.  Sure.  The country’s government has worked a lot in the last decade or so in trying to have the best legal framework for the protection of intellectual property in Costa Rica.  In general, any company, and in particular those that are working with innovations, that are manufacturing in Costa Rica (or in any place in the world) should also have proper and professional legal assistance to deal with intellectual property in Costa Rica.  This is very important.  We need to remember that intellectual property rights are a key for securing exclusivity and the ability to profit from their innovations.  It is very important that companies are accompanied by proper legal assistance and work together with their lawyer on issues of intellectual property protection in Costa Rica.    The probably is that people, or companies, usually focus on developing products or in fabricating and manufacturing them.  They sometimes put off legal assessments of their innovations.  Sometimes they discover, regretfully, in many cases that they are too late.  People forget a principle in life: that early prevention can save you from a painful cure. 

The Central American Group:  That leads me to ask this question, I believe that I am making an assumption here, but perhaps you can give me specific information?  Because Costa Rica, over the last several decades, has become a prominent player in the manufacture of medical devices, I would guess that this is a particularly important topic for people who are in that industry?

Mauricio Bonilla:  They are.  As I mentioned, those companies that are involved in product innovation, It is key for them to protect their intellectual property and to have good advice and legal assessment. 

The Central American Group:  If someone comes to your firm and they are looking for assistance in this area, what do you advise them to take as their first steps?

Mauricio Bonilla:  The first thing you must do is to confirm that your company actually owns the IP rights that you are developing, and this is done by using agreements that require employees and consultants that work developing your new products, to assign any and all IP rights to the company. 

Remember that in some legal systems, the creator is the presumptive owner, so that is why these agreements are extremely important in terms of intellectual property protection in Costa Rica.   

A good Non-Disclosure Agreement is also a great ally to have. Executives talk to suppliers, potential investors, and other parties about their innovations.  These conversations tend to disclose intellectual property information.  That being said, companies MUST sign confidential agreement and NDA`s with their employees, consultants and anyone with whom they might share any information to safeguard their trade secrets and confidential information

The Central American Group:  What intellectual property rights must a company protect?

There are several but let’s focus on Patents and Trademarks. 

In the case of a patent, for example, a patent application must be filed as early as possible and before public disclosure or commercial activity of the product.

People tend to assume that filing a patent application automatically results in enforceable rights, but that’s not the case, in order to have enforceability you must have an issued patent and that usually takes between 2-5 years, or even more.

The Central American Group:  What are some of the issues that a patent solicitor that is concerned with intellectual property protection in Costa Rica must consider in a patent application?

Mauricio Bonilla:  One of the most important issues are the “claims” of a patent.

Claims made for intellectual property protection in Costa Rica define the scope of the invention, and, therefore, what one company can prevent others from doing. You can have as many claims us you can justify in the application. Good legal assistance is very important in this since competitors tend to use the information in a patent but avoid infringement by figuring out a way around the language of these claims.

Another very important matter is that people tend to think that patent applications are formats or templates that an IP lawyer has. Each patent is different and unique, otherwise, it could not be granted. Each patent is tailored to the invention it is meant to cover. Most of the time, the quality of a patent, of course, is determined by the invention. It’s also driven by the quality of the drafter of the patent application.  This requires significant attention and care. Time and money must also be invested in intellectual property protection in Costa Rica.

The Central American Group:  What about the so-called “patent searches?”  Can they be done and how important are they?

Mauricio Bonilla:  Patent Searches are extremely important, and they can help companies and individuals save lots of money in potential infringements or in patent applications that could not be granted.

Imagine, for example, that you have a great idea on how to improve a product, but regretfully a valid patent covers this product.  If you commercialize your improved version of the product, you would be subject to infringing another patent owner’s rights. Or in this case, which happens a lot, you have a great idea and plan to file a patent application, but on the other side of the world, in India for example, someone thinks about the same idea and files the application first.

So, the recommendation is that before developing, marketing or investment in a product that you think is an innovation and is unique, please do the necessary due diligence to confirm what other claims (patents) indicate in that same area.

The Central American Group:  Please tell us something about the “patentability” of medical devices, and what companies must consider in order to achieve intellectual property protection in Costa Rica?

Mauricio Bonilla: It’s important first to remember that a patent for a medical device protects or covers the “physical product,” and that patents are not granted for “ideas” or “methods of treatment.”

Also, a party cannot be granted a patent for a known medical device in respect to a second or additional medical use.  For example, if you discover that an injector that is usually used for diabetes, can also be used not only to supply insulin but to inject another drug to treat a different disease.

The solicitor must also remember that patents are national rights for intellectual property protection in Costa Ria. For example, a patent granted in Costa Rica does not necessarily provide protection in the US or China. There are methods and strategies that you can use in the early stages to be protected.  Publication of your application usually means that the invention is no longer new in other countries.

Central American Group:  What about trademarks?

Mauricio Bonilla:  As we have said, together with patents, medical device manufacturers must be aware and have good legal assistance as regards trademarks.

The basic rule is, register your trademark in order to have intellectual property protection in Costa Rica before launching or investing in marketing. 

Imagine, for example, to think of a case of a company that is developing a product and thinks of a great name for it.  The name that the manufacturers come up enables consumers and medical professionals to identify the product with the company, and they do not file the trademark and invest.  They run the risk of investing in marketing only to discover at a later time that the name is exactly the same or even similar to an existing trademark.

The name and logos are protected as trademarks under intellectual property in Costa Rica. Registering the trademark is a way to stop a third party from using identical or similar names which may confuse consumers or take advantage of your marketing and brand reputation.

The registration takes different in all countries; the protection territorial and not universal, in Costa Rica a ¨clean application¨ takes between 5-7 months. The trademark is protected by 10 years and it can be renewed for similar periods

The Central American Group:  What previous steps should be taken in order to file a trademark to ensure intellectual property protection in Costa Rica?

Mauricio Bonilla:  As mentioned earlier, it is advisable to file the trademark application as soon as possible and before selling the product.  To do that, a trademark search should be done in order to confirm that the name of the intended trademark does not infringe a third-party trademark.

If the search is done as it should be done, it will reveal pre-existing trademarks or applications similar or identical to the proposed denominations, so commercial decisions can be made before undertaking marketing and other efforts.

Proper classification is also important since we need to remember that for trademarks an international classification exists that organizes all products and services in what is called a Nize Classification.  For example, pharmaceutical and veterinary preparations are in class 5, while surgical, medical, dental and veterinary apparatus and instruments are included in class 10.  Depending on what you want to protect you will have to go into the appropriate classification.  This system is used in the protection of intellectual property in Costa Rica, as well as is internationally known and recognized. 

The Central American Group:  This is a topic that there is a lot more depth to than we can get to in a short conversation.  One of the things that we like to do for our listeners is to help them to make contact with people that are reputable and that can help them in Costa Rica and throughout Central America. 

If somebody that is listening to this podcast has a need for the service that you have described over these past few minutes, how could they contact you?

Mauricio Bonilla:  Email is the fastest and easiest way to contact me.  My address is mbonilla@als.cr. 

The Central American Group:  I would imagine that you have a website?

Mauricio Bonilla:  Yes, actually yes.  Our website is www.als.cr. 

The Central American Group:  Are there any parting words of advice that you to our listeners on the topic of intellectual property protection in Costa Rica?

Mauricio Bonilla:  In general terms, always have a lawyer close to you.  As I said at the beginning of this podcast prevention is better than a painful and expensive cure.  Make sure that you ask, consult, pose the right questions to the right people.  That way you will probably avoid many headaches.

The Central American Group: This discussion has been very informative.  Mauricio, we wish you a good rest of the day and thank you for joining us. 

Mauricio Bonilla:  Thank you.  I am here any time that you need assistance. 

The Central American Group:  Thank you very much.

In order to ask written questions on the topic of intellectual property protection in Costa Rica, please fill out the form that is below.