Patents of Invention

– Law No. 41 of July 13, 1995.
– Law No. 29 of February 1, 1996.
– Law No. 35 of May 10, 1996.
– Executive Decree No. 7 of February 17, 1998.
– Law No. 1 of January 5, 2004.
– Law No. 61 of October 5, 2012.

– Convention Establishing the World Intellectual Property Organization (WIPO), since September 17, 1983.
– The Hague Convention Abolishing the Requirement of Legalization for Foreign Public Documents (Apostille), since August 4, 1991.
– Paris Convention for the Protection of Industrial Property, Stockholm Act, since October 19, 1996.
– WTO’s TRIPS Agreement, since September 6, 1997.
– Patent Cooperation Treaty (PCT), since September 7, 2012.
– Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure, since September 7, 2012.

Applicant: the inventor, his assignees or successors, through a lawyer or law firm qualified in Panama.

Protection for foreigners: the same as for nationals.

Naming of inventor(s): compulsory.

Notion of the invention: the law defines the concept of invention as every idea applicable in practice to the solution of a specific technical problem. An invention could be a product, and/or a procedure, or the special use of a product, or the non-evident use of the product.

Novelty (notion): an invention is deemed to be new when priority does not exist in the state of the art. The novelty of the invention is not invalidated if the disclosure occurs, anywhere in the world, within twelve months prior to the date of filing of the application in Panama, or prior to the date of the recognized priority claimed.

Exceptions to protection: the theoretical or scientific principles; the discoveries which consist in disclosing or revealing something which already existed in nature, even though it was previously unknown; the projects, sketches, economic or business principles or methods, the ones relating to purely mental activities and the games; software programs per se, relating to the use designated for a computer; the aesthetic creations and the artistic or literary works; the methods for surgical, therapeutic or diagnostic treatments applicable to the human body, and the ones related to animals. However, this last provision will not be applied to the products, especially to the substances or compositions, nor to the inventions of apparatus or instruments used to put in practice such methods; the juxtaposition of known inventions, or mixture of known products, the variations in their form, dimensions or materials, unless it actually deals with its combination or merger in a manner that they cannot work separately; or that its qualities or characteristics functions be modified to obtain an industrial result not evident to a technician in the matter, and the inventions which are contrary to domestic laws, to health, to public order, to morality, to goods customs, and to the security of the State; inventions that contain living matter from humans, vegetables or animals.

Rights conferred: a patent grants its owner the right to exclude third parties from manufacturing, offering for sale, selling or using the product or importing or storing it, or using the procedure, or to perform any of the acts mentioned above, relating to a product obtained directly from the procedure. However, the exceptions thereof are when a third party, in a non-commercial scale, performs acts relating to the patented invention or when an educational or scientific entity performs acts of manufacture or use of the invention for experimental purposes.

Confirmation patents: not provided for.

Secret patents: not provided for.

Territory covered: Republic of Panama.

Filing requirements for an application (to be sent to resident lawyer):
1. Name and address of the applicant as well as of the inventor(s) if he is not the applicant and the title of the invention;
2. Power of attorney in favor of a resident lawyer or law firm. Said document, once executed, must be duly authenticated either by a Consulate of Panama, or by Apostille;
3. Assignment document, if the applicant is not the inventor. Said document, once executed by the parties concerned, must be delivered duly authenticated either by a Consulate of Panama, or by Apostille;
4. A description of the invention, claims and abstract in triplicate;
5. Drawings in triplicate;
6. If a priority is claimed, the application must attest the country or office where the priority was filed, the date of such filing and the number assigned to said application. A certified copy of the priority application must be filed within six months after the filing of the application in Panama. Multiple or partial priorities can be claimed;
7. If the invention refers to a biological product or process, which implies the use of biological material not available to the public and which cannot be described in a manner that it may be executed by a person skilled in the art, the description shall be complemented with a deposit of said material in a deposit institution, such as those recognized in the Budapest Treaty of 1977, or international recognition of the deposit of microorganism for the purposes of procedures in patent matters, and any other institution recognized by the Panama Industrial Property Directorate (DIGERPI). When the deposit of biological material is made, such circumstances shall be set forth in the description with the name and address of the deposit institute, the date of the deposit and deposit number allotted by the institution.

Filing without power of attorney: possible by posting a surety bond in the amount of U.S.$ 103. The law provides a two-month period to submit the power of attorney. Said period can only be extended for one additional month.

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

Formal examination: upon receipt of the application, DIGERPI will make an examination as to form of the documentation, as well as to determine whether the object of the patent application meets the patentability requirements, except those of novelty and inventive activity. Nevertheless, after hearing the interested party, DIGERPI will deny the granting of the patent by a justified resolution when it is established that the invention lacks novelty in a notorious and evident manner. However, if the application is deficient, the applicant will have a period of six months, renewable for six additional months, upon request of the applicant, to remedy the same. If the applicant does not comply with what is required, the application will be deemed abandoned and the file will be closed. Notwithstanding, when no deficiencies which would bar the granting of the patent or when such deficiencies have been duly corrected, DIGERPI shall inform the applicant that, in order to continue with the proceedings for granting the patent, he will have to request the report on the state of the art.

Report on the state of the art: the request of the examination should be filed by the applicant within fourteen months after the filing date or as from the date of the claimed priority. Said report may be made by domestic or international organizations, and must set forth the elements of the state of the art which might by taken into consideration to appraise the novelty and the inventive activity which constitutes the subject matter of the application, and shall be appraised on the basis of the claims in the application and taking into consideration that description and, as the case may be, the drawings filed. When the lack of accuracy of the description or of the claims prevents from proceeding with the total or partial completion of the report on the state of the art, DIGERPI shall deny the granting of the patent. However, before adopting a definitive resolution, DIGERPI shall serve timely notice thereof on the applicant and grant him six months, which may be extended for two additional months within which to submit the allegations he may deem proper.

Publication: at the expiration of eighteen months from the date of filing the application, or from the priority date claimed, after the examination and the report on the state of the art referred to above, DIGERPI will order the publication in the “Industrial Property Bulletin” (BORPI). The applicant may request in writing, at any time prior to the lapsing of the referred period that the application be published, if the report on the state of the art has already been completed. Once the patent application is published, any person may file duly reasoned and documented objections, to the report on the state of the art within a period not greater than two months counted from its publication. After expiration of the aforesaid two-month term, the objections filed shall be served on the applicant in order that he makes the corresponding comments and amends the claim, if he deems it proper, within a period of not more than two months. Notwithstanding the contents of the report on the state of the art and of the objections made by third parties after the expiration of the time for comments of the applicant, DIGERPI will proceed to grant the patent requested. In the event that the claims are amended, DIGERPI will send copy thereof to third parties who have made the objections to the report on the state of the art.

Grant: the patent will be granted preserving the rights of third parties without guarantee on the part of the State as to the working of the patent of invention per se or of the usefulness for the purpose for which it is granted.

Duration: twenty years, not renewable, counted from the date of filing.

Annuities: fees established by the law are payable every five years to keep the patent in force. Failure to pay such fees will entail to lapse.

Marking of patented goods: not compulsory.

Text of marking: not provided for.

Assignment: the rights arising from a patent may be totally or partially assigned or transferred under the terms and conditions established by the common legislation. The assignment or transfer of rights must be recorded at DIGERPI in order to be effective against third parties.

License agreements: the owner of the patent may grant a license agreement for the working thereof. The license shall be recorded at DIGERPI in order to be effective against third parties. The cancellation of the recordal of a license will be in order, in any of the following cases: (a) when jointly so requested by the owner of the patent, and the person to whom the license has been granted; (b) when one of the parties requests it, in accordance with the terms of the license agreement; (c) due to the nullification or lapsing of the patent; and (d) by court order. Except for an agreement to the contrary, the granting of a license does not exclude the possibility that the owner of the patent may grant to another person, licenses or the simultaneous working thereof, by himself. Furthermore, the person who has been granted a license recorded at DIGERPI, shall have the right to take legal actions for the protection of the patent as though he were the owner himself, unless agreed to the contrary.

Working: consists in the use of the patented process, in the manufacture and distribution, or in the manufacturing and trading of the patented product, or in the mere trading by the patentee in the domestic or international commerce. The importation of the patented product and its subsequent distribution in the Republic of Panama shall constitute working of the invention for the purpose of this Law. However, the Law does not attest a period of time within which a patent must be used in Panama.

Opposition to granted patent: upon request of an interested third party, and previous hearing of the owner, the commercial court will declare the nullification of a patent of invention in any of the following cases: (a) when provided that the subject matter was made in violation of the provisions of the Panamanian Law; (b) when its subject matter includes claims not included in the application originally filed. When the grounds set forth only affect one claim or part thereof, the nullification will be declared only with respect to such claim, or part thereof, as applicable; and (c) when it has been granted to anyone who, according to the Panamanian Law, did not have the right to the granting thereof. The nullification in this case may only be requested by the person to whom the referred rights belong. This action shall be barred within eight years from the date of the grant of the patent, unless same had been obtained in bad faith. DIGERPI will declare the nullification when a judicial judgment has been rendered to that effect.

Infringement: Panamanian law provides that the owner of a Panamanian Letters Patent may initiate criminal and civil actions against whoever manufactures, assembles, markets and distributes products protected by patents of invention; or when the patented process is carried out by a third party without the authorization or corresponding license from the owner. Proceedings must be initiated at the competent authority. Precautionary measure or injunction with a bond to guarantee the discontinuance of the infringing products and acts, and on their advertising or on the prime materials used for the manufacture of the products are also provided by the Panamanian law.

Penalties: in the term of criminal actions the Panamanian law establishes penalties of two to four years imprisonment, but if any of the described acts thereby endanger public health, shall be punished with imprisonment for thirty months to six years. Money laundering funds originating from industrial crimes shall be penalized with five to twelve years imprisonment or 100 to 200 days fine. In the term of civil actions: (1) a fine from U.S.$ 10,000 to U.S.$ 200,000 at the discretion of the Judge; (2) a suspension of the right to engage in commerce or in the exploitation or industries for a period of three months; and (3) if the company is located at the Colon Free Trade Zone, free zone or processing zone in Panama for exportation, will also be punished with a suspension for a minimum period of three months or cancellation of the operation code or permit, and 25% of the monthly income of the company. In case of repeat offense, the penalties set forth under points 2 and 3 hereof, shall be applied for a period of one year, and the penalty set forth under point 1 may be four times the maximum fine therein established.