Patents of Invention
– Patent Law 26/2014 of October 30, 2014, published in the Official Gazette of the Principality of Andorra on November 26, 2014. The Law took effect one month from the day following publication, with the exception of Chapter IX (provisions on validation of European Patents in Andorra) and Chapter X (provisions for implementing the PCT Treaty).
– Patent Law Implementing Regulation, approved on July 15, 2015, and published in the Official Gazette of July 22, 2015, and modified and approved on December 7, 2016, and published in the Official Gazette of December 14, 2016.
Notes: the new Patent Law introduces the measures needed to enable Andorra to accede to international patent treaties, harmonizing local patent legislation with international patent legislation, particularly the patent legislation in neighboring countries. Accordingly, the new Patent Law provides for the accession of Andorra to WIPO’s Patent Cooperation Treaty (PCT) and the signing of an agreement with the European Patent Office (EPO) for Andorra to be part of the designated countries where a European Patent may be validated.
The Implementing Regulation gives practical shape to the Patent Law’s goal of bringing the Andorran patent system in line with the European Patent Convention. The Andorran Patent Office, operational since January 2016, has been combined with the Trademark Office, which was already in existence, to form what is now the Patent and Trademark Office of the Principality of Andorra.
Membership in International Conventions
– Convention Establishing the World Intellectual Property Organization (WIPO), since October 28, 1994.
– The Hague Convention Abolishing the Requirement of Legalization for Foreign Public Documents (Apostille), since December 31, 1996.
– Paris Convention for the Protection of Industrial Property, Stockholm Act, since June 2, 2004.
Conditions of Protection
Right to obtain a patent: belongs to the inventor or his/her successors in title; any natural or legal person as assignee (individual, firm, company or State); any combination of the aforementioned persons.
Applicant not living in the country: if the applicant’s legal domicile or company headquarters is not located in Andorra, an Andorran Patent Attorney must be appointed.
Naming of the inventor: the inventor has the right to be designated as such by the applicant in the application filed with the Patent Office.
Kinds of protection: patents are the sole type of protection addressed by the Patent Law.
Not patentable: (a) discoveries, scientific theories, and mathematical methods; (b) aesthetic creations; (c) schemes, rules, and methods for performing mental acts, playing games, or doing business, and computer programs; (d) presentations of information; (e) inventions whose exploitation would be contrary to public order or morality; (f) methods for treatment of the human or animal body by surgery or therapy and diagnostic methods for the human or animal body.
Exceptions to protection: that which is not regarded as patentable (see above) and cloning or alteration of the genetic identity of human beings, manipulation of human embryos for industrial or commercial purposes, plant varieties, animal varieties, and, in essence, any biological process for producing plants or animals. However, microbiological processes are patentable.
Patentability requirements: products, processes and uses considered novel that involve an inventive step and are capable of industrial application are patentable. Chemical or pharmaceutical substances and inventions involving microbiological subject matter (isolated from its natural environment or produced by means of a technical process) are patentable.
Novelty: an invention is considered to be new if it does not form part of the state of the art; the state of the art comprises everything made available to the public before the date of filing of the application and also the content of all patent applications filed in Andorra, provided they are subsequently published.
Not bars to novelty: (1) disclosure of the invention within the six months preceding the filing date due to, or in consequence of, an evident abuse in relation to the applicant or his/her predecessor in title; (2) display of the invention by the applicant or his/her predecessor in title, within the six months preceding filing of the application, at an official or officially recognized international exhibition within the meaning of the Convention on International Exhibitions, signed at Paris on November 22, 1928, as revised thereafter, provided that a declaration regarding exhibition of the invention is furnished on filing the application.
Inventive step: an invention involves an inventive step if, having regard to the state of the art considered to assess the novelty requirement, it is not obvious to a person skilled in the art.
Industrial application: an invention is susceptible of industrial application if it can be made or used in any kind of industry, including agriculture.
Scope of protection: a patent confers on its proprietor the right to prevent the unauthorized manufacture, import, offering on the market, use, or offering of use of the product or process that constitutes the subject matter of the patent or of substances directly obtained by that process, unless done privately for non-commercial purposes or for experimental purposes; the patent right does not extend to acts in respect of a product protected by a patent after said product has been put on the market in Andorra by the patentee or with the patentee’s consent.
Priority: from entry into force of the Paris Convention, patent applications will be able to claim priority from one or more previous applications. The applicant must submit a certified copy of the priority application within three months from the filing date.
Filing requirements for an application (to be sent to resident agent):
1. A request for the grant of a patent, written in Catalan;
2. A power of attorney (although identification of the representative is usually sufficient in itself, the Patent Office may, at its discretion, demand that a power of attorney be submitted);
3. A description of the invention;
4. One or more claims;
6. An abstract of the invention;
7. The applicant’s relevant contact details.
Note: the aforementioned documentation may be submitted in Catalan, Spanish, French or English. Where it is not in Catalan, it must be accompanied by a translation into that language of, at least, the claims.
Electronic filing: according to the Law it is possible to electronically file documents, but no website or any means are provided.
Minimum requirements for according a filing date: (1) a request for the grant of a patent written in Catalan (which must contain at least the title of the invention); (2) information identifying the applicant; (3) either a description of the invention or a reference in Catalan to a previously filed application (in the latter case it is necessary, when filing, to give the filing date and reference number of the previous application and to name the Patent Office where it was filed, and, within two months from the filing date, to submit a certified copy of that application); (4) the filing fee payment receipt. Note: the aforementioned information may be submitted in Catalan, Spanish, English or French, except where otherwise stated. The documents which are required for the application, but are not necessarily strictly for the purpose of obtaining a filing date, must be submitted to the Patent Office within three months from the date of filing.
Admission of application: the Patent Office examines the application to check that the documentation submitted meets the minimum requirements for according a filing date and orders the admission of the application, whereupon the grant procedure commences. When the minimum filing requirements are not met, a notification of deficiencies is issued and three months are allowed for the correction thereof. When the requirement that has not been met is related to the priority date or any issue is detected in the application related to the priority date, or it is detected that a priority date is missing, this defect may be remedied at any time provided that a sixteen-month term from the priority date involved is not exceeded. If the deficiencies are not remedied, the application is deemed to have been rejected.
Formal examination: following the admission of the application, the Office conducts a complete examination from the formal standpoint of the documents filed, paying special attention to any priority claim, the designation of the inventor and divisional applications. The Office verifies that the application contains all the requisite information. If it does not, the Office invites the applicant to correct the deficiencies. The term to that effect is three months, although in the case of amendment or addition of a priority date sixteen months from that priority date are allowed. The Office is not obliged to check whether the application complies with all patentability requirements or discloses the invention, whether the claims are correct, whether there is unity of invention, or whether any corrections or amendments to the application extend the subject matter of the application as originally filed. Nevertheless, provision is made for the possibility of rejection in cases of clear and notorious lack of novelty, provided that a hearing with the applicant has been held. After this examination and the correction of any deficiencies found (of which the applicant will have been notified), the Patent Office issues a decision notifying the applicant that the procedure may continue, or rejecting the application in full or in part, if it is considered that the application continues to contain deficiencies.
Publication: the application is published by electronic means and a mention of its publication is made in the Official Patent Bulletin of Andorra eighteen months from the filing date of the application, unless any priority is claimed in the application, in which case the application is published eighteen months from the earliest priority date.
Division: a patent application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept. Nevertheless, divisional applications may be filed in the case of complex inventions.
Procedure: if the Office finds that an application satisfies all the formal requirements stipulated, the patent is granted, provided that the grant fee is paid within three months from the publication of the mention of the grant in the Official Patent Bulletin. The granted specification is similarly published by electronic means.
Duration: twenty years from the filing date of the application.
Annuities: in order to keep a patent in force, annuities must be paid from the time of the filing date. Annuities are payable yearly in advance. The first two annuities are covered by the filing fee.
Annuity grace period: six months with surcharge.
Assignment: patents and patent applications may be assigned. To have effect vis-à-vis third parties, an assignment must be drawn up in writing and recorded in the Register of Patents.
Contractual licenses: patents and patent applications may be licensed in full or in part and licenses may be exclusive or non-exclusive. To have effect vis-à-vis third parties, a license must be drawn up in writing and recorded in the Register of Patents. Unless otherwise stipulated, license agreements shall be taken as extending to the entire territory of Andorra and as being of indefinite duration for all acts relating to the invention.
Public license offers (licenses of right): patentees may issue a public offer to grant a license through the Patent Office, in which case annuities are lower. All licenses established through this procedure will be treated as contractual licenses.
Modification of Protection after Granting
Nullification: application for nullity of a patent may be made if: (a) the subject matter of the patent does not fulfill all of the patentability requirements; (b) the invention has not been disclosed in a manner sufficiently clear for it to be carried out by a person skilled in the art; (c) the subject matter of the patent extends beyond the content of the application as filed; (d) the protection conferred by the patent has been extended; (e) the proprietor of the patent was not entitled to obtain the patent. Any person may apply for nullity of a patent in the courts, and nullity may be partial or complete. Nullification of a granted patent may be requested with the competent Court during the entire lifetime of the patent and during five years after its lapse.
Expropriation of the patent: any granted patent or patent application may be expropriated for reasons of public utility or social interest by means of the payment of fair and adequate compensation to the owner.
Lapse: patents shall lapse: (a) at the end of their legal lifetime; (b) by waiver by the proprietor; (c) by non-payment of the corresponding annuity.
Infringement of the patent right: shall give rise to civil or criminal liability on the part of the infringer. The patentee must provide evidence that the patented invention infringed fulfills all the patentability requirements in order for a claim to be admitted. Any patent for the same invention is admissible as documentary proof, provided that it was granted after having undergone examination as to whether the invention complied with the requirements laid down by law by the European Patent Office or by any other Office duly appointed to act as an International Preliminary Examining Authority pursuant to the provisions of the Patent Cooperation Treaty.
Actions: possible petitions include: (a) cessation of use of the patent; (b) compensation for damages; (c) destruction of goods infringing the patent right. Interlocutory relief and detention by Customs of the goods infringing the patent right may be ordered by the courts. Discovery proceedings may likewise be ordered. All infringement claims or requests for interim relief, and all documents in such proceedings, are to be submitted in Catalan. A duly certified translation into Catalan, legalized by Apostille where appropriate, shall be provided for all those parts of a patent not in Catalan.