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Barreda Moller writes...

Oppositions against Patent Applications

Article 42 of Decision 486 provides for the possibility of filing opposition against a patent application within a period of 60 days following the publication date, the rule requiring that the opposition be supported so as to demonstrate the lack of patentability of the invention. The competent National Office is empowered to grant, once and upon request of opponent, a sixty-day extension to file evidence in support of the opposition.  Article 43 of Decision 486 obliges the National Office to notify applicant with the opposition filed, granting the latter a sixty-day term to present its arguments, period that can be extended only once for sixty additional days.

Peruvian legislation does not contain procedural rules on requirements for filing opposition, the need of presenting evidence or arguments supporting it, and the time period the patent applicant is granted to answer the opposition in the event the latter has not been duly supported.  The Patent Office interpreted the rule in that, even if the opposition was not duly supported on allegations of fact and law, the applicant had a sixty-day term to answer it, counted as from the date applicant was served with the opposition.  Moreover, our legislation has no rule or provision that regulates the difference between “supported opposition” and “evidence in support of the opposition”, those concepts being confused with one another.

The Court for the Defense of Competition and Intellectual Property through Decision No.0534-20117TPI-INDECOPI of March 11th, 2011, and as a result of an appeal, has defined the concepts of “supported opposition”, “evidence in support of the opposition”, and “admission of the opposition” in the event an opposition has been filed without factual support, interpreting Article 42 of Decision 486, in terms of what is provided for in Article 31 of Legislative Decree 1075, Industrial Property Internal Regulation, which regulates the grant of patents.  Legislative Decree 1075 establishes that for the admission of an opposition, factual and legal grounds for such opposition must be presented.  Moreover, the Authority has interpreted the rules of the General Administrative Procedure Act which requires, in the event of a petition, the concrete expression of what is requested, the factual grounds supporting it and, if possible, the legal grounds.

The Office of Inventions and New Technologies had admitted an opposition filed against a patent application, the opponent not having concretely expressed the factual and legal grounds on which the opposition was based.  The applicant requested that said opposition be automatically dismissed.  The opponent just limited itself to state in its opposition that “the applicant intends to protect a pharmaceutical combination that has already been considered prior to the patent application under discussion, as demonstrated by the background documents that will be presented later”, without mentioning, by way of enumeration, said background documents that would affect novelty and inventive step.

The Court, when deciding on this case, has established that it is not possible to file opposition just stating that certain patent application does not meet one of the requirements provided by law, offering to present later the documents evidencing it, without even indicating the reasons for said assertions or the documents in support of the opposition.  For the Court, admitting this type of opposition violates applicant’s right of defense, who could not question or refute the grounds on which the opposition is supposedly based. The fact that the Andean Decision empowers the first instance Authority to grant the opponent an additional sixty-day term to file evidence in support of the opposition, does not give the right to present oppositions lacking factual grounds, although the opponent tries to overcome such lack of grounds within the extension granted.

The Court has stated that, under no circumstances, an opposition can be admitted if it does not meet the requirements of law and is not duly supported by factual grounds, wherein any opposition not complying with such requirement must be dismissed.

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