IPRs in PARAGUAY for EU SMEs Mercosur IPR SME Helpdesk

IPRs in PARAGUAYfor EU SMEs

Mercosur IPR SME Helpdesk

INDEX

o INVEST IN PARAGUAYo Why o IPR Statisticso Innovation Statistics

o IP Responsible Institutions & International Treatieso Main IPRs in Paraguay

• Copyright• Patents and Utility Models• Trademarks• Industrial Designs• Geographical Indications and Appellations of Origin

o IPR Enforcement o Additional information

IPRs IN PARAGUAY FOR EU SMEs

WHY INVEST IN PARAGUAY


• The agro-industry sector is the main economic sector in Paraguay. • In 2013, EU exports from Paraguay consisted mainly of agricultural

products: oilseeds, tanned leather, cotton fibre, wood, essential oils and meat products. Packaged medicines are another important economic branch, which represented 44,972,690 euros in 2013.

• Paraguay is currently the world’s largest exporter of renewable energy, the second largest producer of stevia, the third largest producer and exporter of yerba mate, the sixth largest producer and fourth largest exporter of soya bean, the sixth largest exporter of corn, the seventh largest exporter of beef and veal, and the and tenth largest exporter of wheat.

• The main products exported by the EU to Paraguay include manufactured products, such as vehicles, machines and chemical and pharmaceutical products, among others.

IP STATISTICSo IPR activity by residents and non-residents:

o Critical delay: 800 applications were pending of examination at the end of 2010.

o Paraguay grants 1 National patent per year (average)*.o In the period 1999-2013, only 11 patents, 5 utility models and 16 industrial

designs have been granted (100% were abroad)o 22,351 trademarks were applied in 2010, but only 217 were granted that

year (100% abroad).o The technological areas with more patent applications between 1999-2013

were:— Basic materials chemistry— Organic fine chemistry— Handling— Textile and paper machines

IP STATISTICS

Category Score Global RankRegional Rank

International Property Right Index 4.1 89 of 97 19 of 20

Physical Property Rights 5.6 73 of 97 17 of 20

Protection of Physical 4.4 88 of 97 18 of 20

Registering Property 8.2 62 of 96 9 of 20

Intellectual Property Rights 3.6 92 of 97 19 of 20

Potection of Individual Intellectual Property Rights

3.3 92 of 97 18 of 20

Patent Protection 8.6 71 of 97 16 of 20

Copyright Protection 3.9 71 of 80 16 of 20

INNOVATION STATISTICS

oThe most innovative sectors during the period 1998-2012 were: basic materials chemistry (13.33% of total patent applications) and processed organic products (10%).

oParaguay is one the countries with the lowest investment on innovation and research. Additionally, it has an average of only one national patent per year, according to the Council for Science and Technology (Conacyt) and the Directorate General for Intellectual Property (DGPI).


IP RESPONSIBLE INSTITUTIONS & INTERNATIONAL TREATIES

IPR RECOGNIZED BY NATIONAL LAW – AND RESPONSIBLE INSTITUIONS

DINAPI SENAVE DNDA

PATENTS X

UTILITY MODELS X

INTEGRATED CIRCUIT DESIGN

COPYRIGHT X

PLANT VARIETIES X

TRADEMARKS X

APPELLATIONS OF ORIGIN X

GEOGRAPHICAL INDICATIONS X

INDUSTRIAL DESIGN X

TRADITIONAL KNOWLEDGE AND GENETICAL RESOURCES

Source www.inapi.cl

INTERNATIONAL TREATIES RATIFIED Berne Convention (Copyright) Paris Convention (Industrial Property) TRIPS Agreement (IP – WTO)o Madrid System (Trade Marks)o The Hague Agreement (Designs)o PCT (Patents) UPOV (Plant Variety Rights) 1978 Convention on Biological Diversity

Since Paraguay has not ratified the Patent Cooperation Treaty, the Madrid System (Trade Marks) and The Hague Agreement (Designs), it is not possible to designate this country in a single International application for registrations of patents, trademarks or designs, respectively.

STRENGTHS & WEAKNESSES OF THE IP SYSTEM

• Strengths:

- Paraguayan legislation assures reasonable standards of protection for IPRs.

- Is part of many international IP treaties

• Weaknesses:

- High piracy and counterfeit levels

- Critical patent backlog

- Low investment on innovation and research


MAIN IPRS IN PARAGUAY: COPYRIGHT

COPYRIGHT: WHAT YOU NEED TO KNOW

• What is it? Copyright is an IPR that protects the exclusive rights of authors of intellectual works.

• Who is the author? The author is the creator of the work (usually the person indicated in the work when it is disclosed, or the person indicated in the registration).

• Which kind of assets does it protect? Any literary, artistic or scientific work.


• Books, Musical compositions; Photographs, Cinematographic works • Paintings, drawings, Sculptures• Architectural projects, • Adaptations, translations and other transformations • Videograms• Textile designs or models.

• IMPORTANT!BE AWARE THAT Computer programs and its technical user manuals are

ALSO protectable by Copyright


What rights are granted to authors?

Copyright protection grants to the author both moral and economic rights.

• Economic Rights: are exclusive rights over the use and commercial exploitation of the intellectual work.

• Moral Rights: are exclusive personal rights of the author.

When Copyright protection is adquired by authors?• Copyright protection is legally acquired by the author by

the act of creation of the intellectual work.


How long does legal protection last?

o Copyright protection lasts for the author’s life plus 70 years after his/her death.

o For computer programs, if the right holder is a legal entity, the term of protection shall last for 70 years after the first publication.


Shall I register copyright?

Copyright Registration is voluntary but advisable, especially to enforce the right.

Possible options:

• Unregistered Copyright

• Registered Copyright

COPYRIGHT: WHAT YOU NEED TO KNOW• Example

Unregistered Copyright: authors must recollect and furnish documents such as publications, including detailed information to prove authorship and ownership.Registered Copyright: the registration certifies the date of creation of the work, its content and confers authors a simple presumption of authorship by law.

If your copyright is already registered in a foreign country member of Berne Convention, you can ASSURE its PROTECTION in Chile including the following:

Mention: ‘All rights reserved or Reproduction forbidden’Letter c rounded by a circle (©), name of copyright holder and registration number.


• Who can register? A natural person (the author), or a legal person (work´s right holder e.g. work inventions). Foreign applicants must appoint a local representative (IP agent).

o Where to register?— Dirección Nacional de Derechos de Autor (DNDA)

— In person, at the DNDA offices


o Which documents do I need?— An Application Form duly fulfilled and — Title of the work— Nature of the work— Name or pseudonym of the author, editor or printer.— Place and date of disclosure.— Place and date of creation.— Number or volumes, size and number of pages; number of copies

(concerning written works).— Date on which the work was withdrawn from circulation.— Power of attorney, if applicable.

o How much does it cost?— The official registration fee is 15 euros.

COMPUTER PROGRAMS IN PARAGUAY: WHAT YOU NEED TO KNOW?

o Computer programs are treated as any other work subject to Copyright protection (same registration requirements and fee).

o Registration is not mandatory, but very recommendable in order to proof ownership (only presumption)

o There is a legal presumption in favour of the employer, editor or producer over works created in the course of their usual business activities to the extent that the exploitation of the protected work is limited to such activities, unless otherwise agreed by the parties

COMPUTER PROGRAMS IN PARAGUAY: WHAT YOU NEED TO KNOW?

• Who can register? Any natural person (the author) or legal person (work´s right holder e.g. work inventions). Foreign applicants must appoint a local representative (IP agent).

o Where to register?— In person, at Dirección Nacional de Derechos de

Autor (DNDA)


MAIN IPRS IN PARAGUAY: PATENTS

PATENTS: WHAT YOU NEED TO KNOW

o What are Patents? They are exclusive rights granted by the State for protecting an invention, which is a technical solution for an industrial problem.

o Which kind of Patents can be protected? Patents protect inventions such as a product or a process. Utility Models, are ‘petty patents’, such as new or known

devices that provide an improvement, or technical effect in the function of an object (new configuration or form).


Basic patenting requirements:

• Patents of Invention must be New, imply an Inventive Step and subject to Industrially Applicability.

• Utility Models are also patentable if they comply with the abovementioned requirements.

Please note that, even when the requirements are the same, the inventiveness in Utility Model has a less demanding standard than in Patents



o Patent of Inventions protection lasts 20 years from the filing date.

o Utility Models protection lasts 10 years from the filing date.


• What is excluded from Patentability?

• Immoral inventions and those which its commercial exploitation is forbidden for public order, ethics, health and environment protection reasons.

• Animal, plants (except microorganisms) and essentially

biological processes to produce plants or animals (except microbiological or biological processes)


o What is not considered Invention? • Discoveries, scientific theories and mathematical methods• Aesthetic creations • Schemes, rules and methods to perform economic, business,

advertisement activities, mental acts and games• Computer programs• Surgery and diagnostic methods applied to human body or

animals. • Presentation of information


o Who can register?

Any national or foreign natural or legal person can apply for a patent, whether this person is the inventor or not. An Intellectual Property Agent must necessarily be hired for the purposes of representation at the DINAPI.

o Where to register?

Applications can be filed before Dirección Nacional de Propiedad Intelectual (DINAPI) offices


How much does it cost?

The cost of the application is approximately 90 euros.

Additionally, there is a sum of 3,592 euros for annuities and background reports to be paid by instalments from the 3rd to the 20th year.

PATENTS: TIPS AND WATCH OUTS

Grace Period

o Paraguayan legislation grants the inventor the ‘grace period’ for Patents and Utility Models.

o The ‘grace period’ provides that the novelty requirement is not affected by disclosure made by the inventor during the twelve (12) months prior to the filing date.

IPRs IN PARAGUAYFOR EU SMEs

MAIN IPRS IN PARAGUAY: INDUSTRIAL DESIGNS

INDUSTRIAL DESIGNS: WHAT YOU NEED TO KNOW

What is it? • Industrial Design (three-dimensional) and Drawings

(bidimensional) protect the external appearance of an object.

How long does legal protection last?• Industrial Designs and Drawings protection lasts 5 years

from the filing date of the application. It can be renewed for two consecutive periods of equal duration.


What are the formal requirementes for registration?• Novelty• Originality• Industrial applicability

TIPS & WATCH-OUTS

The Paraguayan Design Office has limited computer resources, which makes it difficult to access foreign databases when examining the novelty of a design.


Grace Period

o Paraguayan legislation grants the creator a ‘grace period’ for Industrial designs.

o The ‘grace period’ provides that the novelty requirement is not affected by disclosure made by the creator during the six (6) months prior to the filing date, as far as the disclosure takes place at an official Trade Fair/exhibition.


What can be protected by Industrial Design and Drawing?

• Any new plastic forms composed by lines and colours, designed to give a special appearance to an industrial or handcrafted product and to serve as a model for manufacture.

• Any new combination of lines and colours, designed to give a special appearance to an industrial or handcrafted product and to serve as a model for manufacture.


Who can register? • Any natural or legal person can apply for the registration

of Industrial Designs and Drawings. Non-residents must appoint an IP agent in Paraguay.

Where to register? • Applications can be filed before Dirección Nacional de

Propiedad Intelectual (DINAPI) offices

INDUSTRIAL DESIGN: WHAT YOU NEED TO KNOW

How Much does it cost?

• The official fee for the submission of an application is around 65.

• The same fee is applicable for renewals.

These costs refer to official fees only. Representation fees (for lawyers or other representatives) and translation costs are not included.


MAIN IPRS IN PARAGUAY: TRADEMARKS

TRADEMARKS: WHAT YOU NEED TO KNOW

What is it? • A trademark is a distinctive sign that can be represented

graphically and distinguish the origin of goods and services.


What can be protected as a Trademark?

• Signs may consist of words, slogans, emblems, monograms, seals, stamps and engravings, names, fanciful words, distinct combinations of letters and numbers, combinations and arrangements of colours, labels and packaging and containers

• Three-dimensional trademarks• Sound trademarks


Basic requirements for registration: • Signs must have ‘distinctive character’. • Graphic representation• Signs describing the good or service they cover are,

generally, excluded from trademark protection (unless they have acquired distinctive character through use).


Which signs may not be elegible for registration? • Signs that are confusingly similar to previously registered signs,

• Signs that are confusingly similar to well-known trademarks

• Signs likely to mislead or deceive consumers as to the characteristics of goods and services,

• Descriptive marks

• Signs contrary to public order and morality,

• One single color

• Signs consisting of or containing geographical indications

• Flags, official emblems of any State or international organization unless prior authorization from the competent authority.

• Signs consisting of or containing geographical indications



o Trademark protection lasts 10 years from the granting date. This may be indefinitely renewed for 10-year periods.


Who Can Register? • Any natural or legal person can apply for the registration

of a Trademark. Non-residents must appoint an IP agent in Paraguay.

Where to Register? • Applications can be filed before Dirección Nacional de



How much does it cost?

• The official fee for a trademark application is around 25 euros

• The fee for a trademark renewal amounts to 125 euros.• The process for the renewal of a trademark takes

between 4 and 6 months. Since renewals can be requested up to one year prior to the expiry date, it is advisable that the applications are filed early.


Single-class applications

• Paraguay adopted the single class trademark registration system. Therefore, a separate trademark application must be filed with respect to each class of products or services for which the trademark protection is requested .


License and transfer

• Applied and granted trademarks could be licensed and transfered, but they must be registered before DINAPI to be enforceable against third parties.

• If the transfer contract (or total or partial licence or merger of trademarks) is signed abroad, the document must be duly authenticated by the corresponding Paraguayan consulate or certified by apostille. Once in Paraguay, the document must be legalised also before the Ministry of Foreign Affairs.


MAIN IPRS IN PARAGUAY: GEOGRAPHICAL INDICATIONS (GI) &

APPELLATION OF ORIGIN (AO)

GI: WHAT YOU NEED TO KNOW

What is a Geographical Indication? • It is a sign used on goods that have a specific geographical

origin and possess qualities, a reputation or characteristics that are essentially attributable to that place of origin. (Source WIPO)

What is an Appellation of Origin? • It is a special type of Geographical Indication generally

consisting of a geographical name or a traditional designation used on products which have a specific quality or characteristics that are essentially due to the geographical environment in which they are produced. (Source WIPO)

http://www.wipo.int/geo_indications/en/

http://www.wipo.int/geo_indications/en/


What can be protected as Geographical Indication?

• Products whose quality, reputation or characteristics are relate to its geographical place of origin (such as a region or another locality in the country).

• In case of Appellations of Origin, other human or natural factors shall characterize the product.


How much does legal protection last?

o Geographical Indications registration is valid for 10 years and may be indefinitely extended for equal periods of time.

o Renewal must be requested in the last year prior to its expiration and the same formalities as for the registration apply.

o The new term of protection is calculated from the expiration date of the earlier registration.


Who can register?

• The acknowledgement and registration of GIs and AOs may be conducted ex officio or ex parte, by the persons showing a legitimate interest, i.e. natural or legal persons engaged in the extraction, production or manufacturing of the product(s) to be protected or the association under which they are grouped.

• Regional and municipal authorities are also considered interested parties, as long as the GI or AO is located in the same particular district.


Foreign GI and Aos:• The DINAPI will register GIs and AOs related to foreign

products and services, upon request of the person entitled thereto. For this purpose, Paraguayan GIs and AOs must be mutually acknowledged in the other country.

• Protection in the country of origin: The applicant(s) must prove that the GI or AO is protected in the country of origin through a certificate, written record or other similar documents.


What documents and information are needed?

• The name and the address of the Regulatory Committee applying for the registration.

• Attestation of legal personality of the Regulatory Committee, identifying the producer(s).

• Conditions of the study and technical reports. One single document comprising: The name and description of the product and, if appropriate, specific rules for

the packaging and labeling and a concise description of the geographical extent.

Description of the link between the product and the geographical environment or origin, highlighting, if appropriate, the specific parts of the product or method of production that justify this link.


Where to register? • Applications can be filed before Dirección Nacional de


How much does it cost? • Registration fees are 66 Euros.


TIPS & WATCH-OUTS

Paraguay has ratified the TRIPS agreement, but is not party to the Lisbon Agreement.

IPRs IN PARAGUAY: FOR EU SMEs

IPR ENFORCEMENT

How to Enforce your IPR Rights:

• Administrative actions• Civil Litigation • Criminal Prosecution • Preliminary injunctions• Border Measures

IPR ENFORCEMENT: WHAT YOU NEED TO KNOW

How to Enforce your IPR Rights:

• Administrative actions• Civil Litigation • Criminal Prosecution • Border Measures


Border measures:• Customs Register for Trademarks (RAM)• Aim: detection of piracy and counterfeited goods• The competent body regarding customs is the National

Customs Authority (DNA)• Only valid for trademarks (other IPR are excluded)• Registration procedure:

Takes c.a. 2 months from filing the documents Same period of validity as the trademark


Customs Register for Trademarks (RAM):

• DNA sends digital notification to IP Agent, which has to decide what to do with the seized products in the following working day:

A) Suspension of custom’s clearance

B) File a criminal complaint before the Public Prosecutor’s Office


Other custom authorities:

• Administrative Coordination of Customs Research (CAIA): detect allegedly infringing goods at customs and then seize them and file a complaint at the Public Prosecutor’s Office

• The General Directorate for Enforcement (DGO), carries out controls to detect allegedly infringing goods, mainly at custom




MAIN IP ORGANISATIONS AND SOURCES OF INFORMATION

NAME WEB ADDRESS

National Directorate for Intellectual Property (DINAPI)http://www.dinapi.gov.py/

National Directorate for Customshttp://www.aduana.gov.py/

Ministry of Trade and Industryhttp://www.mic.gov.py/mic/site/index.php

Ministry of Agriculture and Livestock - National Directorate for

Seedshttp://www.mag.gov.py/index2014.php

Intellectual Property Prosecution – Public Prosecutorhttp://www.ministeriopublico.gov.py/

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IPRs in PARAGUAY for EU SMEs Mercosur IPR SME Helpdesk