Patents of Invention

– 1993 Political Constitution; Civil Code (Articles 884 and 886.6); Penal Code (Article 222).
– Decision 486 of the Andean Community (Cartagena Agreement), in force since December 1, 2000.
– Legislative Decree No. 1075 Approving the Supplementary Provisions of Decision No. 486 of the Andean Community, published in in the official gazette El Peruano on June 28, 2008.
– Legislative Decree No. 1397 on Amendments to Legislative Decree No. 1075, published in the official gazette El Peruano on September 7, 2018.

Membership in International Conventions

– Pan-American Convention of Washington (1929).
– Convention Establishing the World Intellectual Property Organization (WIPO), since September 4, 1980.
– WTO’s TRIPS Agreement (ADPIC), since January 1, 1995.
– Paris Convention for the Protection of Industrial Property, Stockholm Act, since April 11, 1995.
– Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure, since January 20, 2009.
– Patent Cooperation Treaty (PCT), since June 6, 2009.
– The Hague Convention Abolishing the Requirement of Legalization for Foreign Public Documents (Apostille), since September 30, 2010.

Filing

Applicant: the inventor or his assignee (whether an individual, firm, company or corporation).

Foreign applicant: must appoint a representative residing in the country.

Novelty: an invention is not considered new if it is in the state of the technique, that is, if it has been made public, by means of an oral or written description, or by use, or any other means sufficient so as to permit its execution before the day of filing of the patent application or the recognized priority. An application does not lose its novelty if such disclosure is the result of a clear abuse in detriment of the applicant or the person holding his/her rights or the fact that the applicant or person holding the rights may have exhibited the invention at an officially recognized exposition or fair held in one of the member countries (Andean Community countries: Bolivia, Ecuador, Colombia, Venezuela and Peru) or that he may have carried on experiments to prove its industrial application.

Inventive level: if, for an expert, the invention has not evidently been derived from the state of the technique.

Industrial application: if the object of the invention can be produced or used in any kind of industry (any productive activity, including services).

The following are not considered inventions: (1) discoveries, scientific theories and mathematical methods; (2) the whole or part of living beings as they are found in nature, natural biologic processes, biological material found existent in nature and biological material that can be isolated; including genoma and germoplasma of any living being; (3) literary or artistic works or any other aesthetic creation, protected by copyrights; (4) plans, rules and methods for the exercise of intellectual activities for commercial economic activities; (5) computer programs or software as such; (6) the ways in which data are presented.

Unpatentable inventions: (1) inventions whose commercial exploitation within the territory of a country member should be impeded in order to protect public order and moral; (2) inventions whose commercial exploitation in the respective country member should be impeded in order to protect the health or life of people, animals or to protect plants or the environment; (3) plants, animals and biological procedures essentially used to obtain them, which are not non-biological or microbiological procedures; (4) therapeutical or surgical methods to treat humans or animals as well as diagnostic methods applied to human beings and animals.

Unity of invention: a patent may only cover one invention, or a group of inventions which are interrelated so as to constitute one sole inventive concept.

Priority: a priority of one year may be claimed from applications filed in countries which are members of the Paris Convention or applications filed in any Andean Community country.

Filing requirements for an application (to be sent to resident agent):
1. Identification data, address and/or power of attorney;
2. Name, address and nationality of the inventor(s) and title or denomination of the invention;
3. Description of the invention in Spanish;
4. One or more claims in Spanish;
5. Summary with the object and purpose of the invention in Spanish;
6. If necessary: figures or technical drawings, exhibition certificate, copy of the Inventors' Assignment document with the signatures duly legalized, indication of the registration number of the Access Contract and copy thereof, copy of the document that accredits the authorization license for the use of traditional knowledge, certificate of deposit of biological material.

Term for filing the missing documents set by the Peruvian Patent and Trademark Office, INDECOPI: usually sixty working days.

Electronic filing: enabled since April 2020 for users to send documents through the virtual reception desk on the website of INDECOPI. 

Electronic signatures: are accepted for writs by the virtual reception desk.

For a change of name or address:
1. Power of attorney mentioning the new name or address; a scanned copy is sufficient.

Requirements for a PCT application: same as for a national patent application. In addition, the applicant must state that the application filed is international and indicate at least one member country. Time limit for entering the national phase: 30 months for both Chapters I and II.

Examination

Examination: formal and substantive. The substantive examination is conducted after all the formal requirements have been met.

Accelerated examination: not available.

Extent of examination: the Examiner must establish if the invention is new or not and if any claim or opposition (“observation”) is valid.

Application kept secret: as long as the aforementioned notice has not been published, unless the applicant provides a written consent, the file cannot be consulted by third parties. Once the patent has been published, the file becomes public and can be consulted.

Amendment of application: possible, but changes cannot involve an extension of the scope of the invention or the information disclosed in the original application.

Dispute about ownership: possible at any time.

Dispute about novelty: possible within sixty working days from the date of the official publication.

Divisions: possible at any moment of the patent registration procedure, before the issuance of the grant decision.

Protection

Granting: usually, the documents are delivered (in digital format) within thirty-six months after the filing date.

Duration: twenty years from the filing date.

Annuities: to keep the patent or the application in force, annuity fees must be paid from the first year following the filing date.

Annuity grace period: six months, subject to the payment of an additional fee.

Assignment: must be recorded at the Peruvian Patent Office.

Licenses: the owner of a patent may grant a license to another person for its working only by means of a written agreement; licensing contracts must be registered by the Peruvian Patent Office (Office of Inventions and New Technologies of the National Institute for Defense of Competition and Intellectual Property Protection, INDECOPI).

Working: the patent must be worked in Peru or any other Andean Community member country within three years from the date of its granting or four years from the application date (whichever is later) by the patent holder directly or through a third person authorized by him. A compulsory license may be granted if the invention has not been worked where the license was requested, and if the exploitation has been discontinued for more than one year. Exploitation also means the import with distribution and trade of the patented product, when done efficiently enough to satisfy the needs of the market. The publication or the offer to license it are not considered valid working.

Opposition to an application: possible within sixty working days from the official publication.

Procedure for opposition: whoever has a legitimate interest can (only once) file objections supported by evidence in order to challenge the invention patentability. Opposition without evidence can be punished.

Registration: after the procedure.

Corrections: by request of the owner of the patent or the Patent Office.

Publication: an abstract of the invention.

Modification of Protection after Granting

Right of prior user: the annulment of a patent registration can be stated when a third party proves a prior use of the invention.

Opposition to granted patents: not possible.

Expropriation: no provision.

Nullification: ex officio or at request of a party, the Peruvian Patent Office can decree the nullity of a patent: (a) if it was granted contravening any of the provisions of Decision 486 or the national legislation; (b) if it was granted based on false or inaccurate essential data included in the application. Nullification may be filed at any time. When the above causes are only applicable to some of the claims, or to a part of one claim, the nullification shall be stated only with respect to such claims or part of a claim, as the case may be.

Validation of invalidated patents: not possible.

Infringement: the holder of a patent can initiate infringement and indemnity actions. The holder can sue for damages against whoever has been working the patented process or product, without his/her consent, when said working has taken place between the publication date of the patent application and the granting date of the patent. If the patent covers a process to obtain a product, it is up to the defendant in question to prove that the process he has used to obtain the product is different from the process protected by the patent whose infringement is being claimed. The defendant’s legitimate interest as regard to the protection of his commercial and manufacturing secrets will be taken into account in producing evidence to the contrary.

Penalties: penalties for infringement are: cessation of the manufacturing process, the destruction of the product, the closing of the business or any other measures deemed appropriate, confiscation or the imposing of a fine, depending on the seriousness of the infringement, without prejudice to any other civil or penal action that may be applicable.