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 Patents     

On September 22 and September 25, 2000 a new Patent Law was published. It is in force since  November 24, 2000.

The object of the law are patents of invention, utility models and industrial designs.

Highlights regarding patents of invention

  • Patents are granted for products or processes.
  • The patent term is 20 years from the application date.
  • The term for granted patents and/or applications filed prior to November 24 may be extended to 20 years (the Law of 1899 provides for a 10 year term). A written application must be filed before the end of the patent term.  Fees to be paid (if any) are to be determined  by the implementing regulation, not yet published.
  • International exhaustion applies.
  • Licenses and assignments must be recorded before the PTO.
  • International classification (Strasbourg Agreement)

Requirements of patentability are: 

 

In order to be granted a patent, an invention must meet the following cumulative criteria of validity:

  • It must be novel. An invention is considered novel if it does not form part of the state of the art. The state of the art comprises anything made available to the public by any means in Nicaragua or abroad before the date of filing of the patent application. To the effect of determining novelty, the state of the art shall also comprise the contents of any other patent application with a filing or priority date prior to the application being considered.
  • It must involve an inventive step. An inventive step is considered to be present if, having regard to the state of the art, the invention is not obvious or evident to a person skilled in the art.
  • It must be susceptible of an industrial application. It is considered that an invention is susceptible of an industrial application, if its object can be used in any industrial application or productive activity. The term industry is to be interpreted widely.

Requirements for application: 

  • Two copies of the description, claims, abstract, and drawings if applicable. All documents must be translated into Spanish. If documents are not filed in Spanish, the PTO will notify the applicant that translations into Spanish must be submitted. The term for submitting the translations into Spanish is of two months from the notification date; otherwise the application will be deemed as not filed. 

  • Power of Attorney legalized by a Nicaraguan Consul.

  • Priority document, if priority is claimed (the priority document may be submitted within 4 months of the end of the priority claimed).

  • Name(s) of inventor(s).

  • If the inventor(s) is/are not the applicant(s), evidence of assignment of the invention to the applicant.

  • If applicable, evidence that biological material has been deposited at a recognized institution. A list of recognized institutions has not yet been made available.

  • If applicable, copies of the foreign application (be it national or PCT), search report on prior art and substantive examination as performed by a foreign Office, an International Searching Authority and/or Examining Authority as defined by the Patent Cooperation Treaty (PTO).

The following provisions will apply for the entry of a PCT application into the national phase:

  • A copy of the international application will not be required, unless it was not timely transmitted to the Nicaraguan Patent Office.
  • All provisions of Nicaraguan Patent Law are applicable.
  • A translation into Spanish of the abstract, description, claims and descriptive text to the drawings must be submitted.
  • National Patent Office fees apply.
  • The national phase must be initiated in accordance to Article 22 PCT.
  • An accredited sufficiently empowered national representative must be appointed.
  • When demanded, the applicant must meet any additional requirements as per Rule 51bis.
  • The Office will publish the application in accordance to national Law.
  • The Office will perform a substantive examination on the basis of the Preliminary Examination Report, if available.

 Procedural steps: 

  • Application. An application date shall be granted if a description of the invention is filed in any language, along with sufficient information to identify the applicant, and the granting of a patent is requested.

  • Formal examination. Should the PTO find that any formality was not fulfilled, including the payment of fees, it shall notify the applicant to correct the deficiency within two months of the application date. If the deficiency is not corrected, the application will be deemed as not filed.

  • Publication. The application will be published 18 months after the application date, or, if applicable, 18 months from the priority date. Upon written application by the applicant, the application may be published before 18 months.

  • Observations by third parties. At any time before the patent is granted, any interested party may comment on the validity of the patent application. The applicant shall have two months from the notification date contest any observation. The filing of observations by third parties shall not suspend the granting process, nor the third party shall become a  party to the process.

  • Substantive examination. The applicant shall pay the fee for the substantive examination within six months of the publication date. If the examination of the  patent application reveals that the invention does not meet the requirements for patentability, the PTO shall notify the applicant, who will have three months from the notification date to correct any deficiency.

  • When applicable,  the substantive examination shall be carried out on the basis of documentation provided by the applicant on examinations carried by other Offices or by an Examining Authority as defined by the Patent Cooperation Treaty (PTO).

  • Once the substantive examination has been successfully completed, the patent shall be granted upon the publication of an advertisement to that effect.

 

Highlights regarding patents of Utility Models   

 

Matters excluded from protection: 

  • Procedures
  • Substances or compositions.

Requirements of patentability are:

  • Novelty
  • Industrial application

Term

  •  10 years from application date.

 Procedure

  •   Provisions for patents apply mutatis mutandis.  

 

 Highlights regarding patents of Industrial Design  

 

Protection granted to an industrial design does not exclude other legal forms of protection.

 

Excluded from protection are technically functional designs, as well as designs whose shape is necessary to be mechanically fitted into another good, of which the design is a part. 

  

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