Patents of Invention

– Law No. 354 on Patents of Invention, Utility Models and Industrial Designs, effective from November 25, 2000, amended on March 22, 2006, September 13, 2007 and April 3, 2020.

Membership in International Conventions

– Convention on Patents of Invention and Industrial Designs and Models signed in Buenos Aires, August 20, 1910.
– Convention Establishing the World Intellectual Property Organization (WIPO), since May 5, 1985.
– Paris Convention for the Protection of Industrial Property, Stockholm Act, since July 3, 1996.
– WTO’s TRIPS Agreement, since January 1, 2000.
– Patent Cooperation Treaty (PCT), since March 6, 2003.
– Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure, since August 10, 2006.
– Dominican Republic – the United States of America – Central America Free Trade Agreement (DR-CAFTA), since March 31, 2006.
– Chile – Central America Free Trade Agreement, since December 16, 2011.
– Mexico – Central America Free Trade Agreement, since March 27, 2012.
– The Hague Convention Abolishing the Requirement of Legalization for Foreign Public Documents (Apostille), since May 14, 2013.
– The Association Agreement between Central America and the European Union, since August 1, 2013.

Filing

Applicant: the inventor, his successor or his assignee. If the application is filed by the assignee, the corresponding assignment should be filed. For national phase of PCT applications, where the international applicant is the same as the local applicant, no assignment document is required.

Foreigners and nationals not living in the country: may file applications appointing a duly empowered local representative, who must be an individual (a patent attorney) who is granted a power of attorney duly legalized.

Protection of foreigners: same as for nationals.

Concept of patentable invention: an invention is patentable if it is new, the result of an inventive activity, and liable to industrial application, or if it constitutes an improvement to another invention provided that such invention is not legally reputed as non-patentable. An invention is considered a technical solution to a specific problem, constituent by a product or a process, or applicable to both.

Matters not considered inventions: (a) discoveries that consist in publishing or revealing something that already existed in nature, although previously unknown by man; (b) matters or energies as they are in nature; (c) biological processes as occurred in nature for obtaining or reproducing plants and animals without human intervention, except microbiological processes; (d) scientific theories and mathematical methods; (e) aesthetic creations and artistic and literary works; (f) plans, rules and economic, advertising or businesses methods, as well as to perform mental or intellectual acts or game matter; computer programs taken alone.

Matters excluded from protection for patent: (a) animals; (b) surgical treatment; therapeutic or diagnostic methods applicable to the human body and those related to animals; (c) inventions contrary to good morals or public security; (d) inventions contrary to human, animal or plant health or life or contrary to the environment.

Novelty: international.

Novelty grace period: the disclosure of an invention shall not affect its consideration as new when, within twelve months prior to the date of filing the application (or priority date, if any) the inventor or his assignee has made the invention known, by putting it into practice by any means of communication or because an agreement was not complied or by an illegal act against the inventor or his successor.

Filing requirements for an application (to be sent to resident patent attorney):
1. Power of attorney, legalized either by Apostille or up to the Nicaraguan Consulate in the country where issued;
2. Title, specification, technical summary, claims and abstract, in Spanish, in duplicate;
3. Drawings, in duplicate;
4. Priority document (must be filed with a certified Spanish translation thereof within ninety days counted from the filing date in Nicaragua);
5. If the applicant is an assignee, an assignment agreement must be filed legalized either by Apostille or up to the Nicaraguan Consulate in the country where issued.

Minimum requirements to obtain a filing date: (a) express indication that a patent application has been filed; (b) enough information to identify the applicant; (c) description of the invention filed in any language.

Term for filing the missing documents: two months from the notification date of the Registry of Intellectual Property requiring the documents.

Electronic filing: not available.

Electronic signatures: are not accepted (only wet signatures).

For a change of name or address:
1. Change of name/address document, legalized either by Apostille or up to the Nicaraguan Consulate in the country where issued;
2. Power of attorney reflecting the new name/address, legalized either by Apostille or up to the Nicaraguan Consulate in the country where issued.

PCT applications: time limit for entering the national phase: 30 months for both Chapters I and II.

Examination

Formal examination: the Registry examines the documents presented to see that they are in conformity with the law’s requirements.

Accelerated examination: a Patent Prosecution Highway (PPH) program is available that allows expedited examination and the grant based on the U.S. positive IPRP. The only document required is the IPRP. A scanned copy will suffice, along with a Spanish translation. Additionally, if amendments to the claims were done in the international phase, such amendments should also be filed locally.

Publication and remarks: afterwards, the application is published in the Official Journal or in a newspaper of national circulation. At any time, before the final resolution, a third party can file remarks or documents to determine the patentability of the application. Remarks do not stop the process.

Substantive examination: the substantive examination is carried out by the Registry of Intellectual Property (Patent Office) to determine the patentability of the application after its publication. Upon carrying out the substantive examination the Patent Office may request the aid of specialized independent experts or public or private bodies and institutions, national or foreign, or in the frame of regional or international agreements. When applicable, the substantive examination can be done using documents given by the applicant related to examinations carried out by other Patent Offices or in accordance with the process established in the PCT. If during the in-depth examination, it is found that the application does not comply with the law requirements for granting the patent, the applicant is required to make pertinent explanations and file additional information in writing.

Conversion of the application: a patent application may be converted into a utility model application or vice versa.

Amendments of the claims: permitted.

Licensing: licensing of application or patents is allowed.

Granting

Registration: once the procedure is accomplished, the Patent Office grants the patent. The patent is registered and a Letter Patent Deed is given to the applicant in paper format.

Publication: the granted patent is published in the Official Gazette. The right conferred by the patent will be determined by the approved claims. The description and the drawings or plans or the deposit of biological material will serve to interpret the claims.

Beginning of protection: date of application.

Duration: twenty years counted from the application date, subject to payment of annuities.

Extension of duration: exceptional. As a result of the recent amendment to the Patent Law, an extension is possible in case of unjustified delays of more than five years due to the Patent and Trademark Office or the competent authority to grant sanitary registrations.

Annuities: annuities are payable per year from the third year of the application date, up to the last year of the patent life. Grace period: available, subject to payment of a U.S.$ 200 fee.

Working: not required.

Compulsory license: anyone may request the grant of a compulsory license for technical or economic reasons as well as licenses by “dependency of patents”, to work a newer patent, which would not be able to be worked because it would infringe the rights of a previous patent.

Restoration: a patent declared extinguished cannot be revived.

Assignment: possible;assignment of patents must be registered at the Patent Office; requirements: deed of assignment embodying power of attorney signed by assignor and assignee and legalized.

Modification of Protection after Granting

Rights of prior user: a prior user of an invention within Nicaragua is entitled to continue working his patent, provided he has proved the use thereof.

Cancellation action: the Patent Law provides the right to file actions of cancellation and nullity against granted patents. The Patent Law is contradictory because it provides such actions through an administrative procedure of nullity and cancellation whenever all pertinent proofs are offered before the Patent Office, which is authorized to declare a granted patent void at its own instance and, on the other hand, the law provides that only the courts are authorized to judge such actions.

Reasons for cancellation: can be (a) the patent matter is not an invention or the patent was granted for an invention lacking novelty at the time of the application; (b) the patent was granted for an unpatentable invention; (c) the patent does not disclose the invention; (d) the claims do not satisfy the legal requirements; (e) the patent contains a disclosure wider than the one contained in the application.

Nullification: this action can be filed by the owner of patent rights, whose rights have been infringed by the registrant of a patent.

Infringement: a patent is being infringed when a third party manufactures or sells counterfeit products or when the patented process is carried out by a third party without the authorization or corresponding license from the owner.

Penalties: from one to two years and from one to three years imprisonment, or fine of three hundred “days fine”, according to the infraction, and disqualification from practicing his/her specific profession or activity against the patent infringer. “Days fine” is not a specific fine, but a discretional fine according to the Judge’s criteria, taking into account the financial situation of the infringer. The patent owner is also entitled to claim damages.

Possibility to extend the protection of patents in force registered under the old law: the registrants of patents in force registered under the old law can extend their protection from ten to twenty years by paying the annuities established in the new law.

Possibility to extend the protection of patents due to delay in granting the protection: the applicant will enjoy protection for a maximum of 550 days in addition to the protection of twenty years if the granting of the patent is unjustifiably delaying for: (a) more than five years from the application date and (b) more than three years from the petition of the expert exam. The same extension of protection is applicable for an unjustifiable delay of five or more years, from the application date, in granting the sanitary registration for the commercialization of pharmaceutical products, protected by patents of invention. The applicant must file the petition for extension of protection within sixty days following the date on which the corresponding certificate of registration is received.