Common Intellectual Property Law in South America (Decision 486 of the Andean Convention)

July 13, 2006
Patent Attorney
Kentaro Tsuruta

I. Introduction

The Andean Community (Comunidad Andina) is a community of countries in the Andean region in the South America. Current member countries thereof are Colombia, Peru, Bolivia, and Ecuador.
Objectives of the Andean Community are: promotion of the member countries’ harmonious development through integration and cooperation; promotion of economic growth and job creation; facilitation of their participation in the regional integration process, with a view to the formation of a Latin American common market; reduction of the member countries’ external vulnerability and improvement of their position in the international economy; and reinforcement of subregional solidarity and reduction of differences in development among the member countries. That is, a main objective of the Andean Community is considered to build an economically cooperative system.
The Andean Convention (CAN) is a convention that binds the legal systems of the member countries into a unified system.

Laws involving intellectual property rights are as follows: Common Intellectual Property Law (Decision 486); Common Provisions on Copyright and Neighboring Rights Law (Decision 351); Protection of the Rights of Breeders of New Plant Varieties Law (Decision 345); and Access to Genetic Resources Law (Decision 391). This column covers outline of the Common Intellectual Property Law.

II. Common Intellectual Property Law
Headings of Decision 486 of the Andean Convention are extracted below so that you can grasp its general idea.

1. General Rule
National treatment
Most-favored-nation treatment
Biological and Genetic Heritage and Traditional Knowledge
Periods and Deadlines
Notifications
Language
Claim of priority
Discontinuance and abandonment
2. Patent
2-1 Patentability requirements
2-2 Patent owners
2-3 Patent Applications
2-4 Examinations
2-5 Rights conferred by patents
2-6 Obligations of the patent owner
2-7 Regime of compulsory licensing
2-8 Acts subsequent to the patent grant
2-9 Invalidation of the patent
2-10 Lapsing of the patent

3. Utility Models
4. Circuit layout of integrated circuits
4-1 Definitions
4-2 Requirements
4-3 Right holders
4-4 Application for registration
4-5 Examination
4-6 Rights conferred by registration
4-7 Licensing system
4-8 Invalidation of the registration

5. Industrial Design
5-1 Requirements for protection
5-2 Registration procedure
5-3 Rights conferred by registration

6. Trademarks
6-1 Registration requirements
6-2 Registration procedure
6-3 Rights and Limitations conferred by the trademark
6-4 Licensing and Assignment of trademarks
6-5 Cancellation of registration
6-6 Renunciation of registration
6-7 Invalidation of registration
6-8 Lapsing of registration
7. Advertising slogans
8. Collective trademarks
9. Certification marks
10. Trade names
11. Labels or emblems
12. Geographical indications
12-1 Appellations of origin
12-2 Indications of source
13. Well-known distinctive signs
14. Right of action for revindication
15. Actions for infringement of rights
15-1 Rights of the owners
15-2 Provisional measures
15-3 Border measures
15-4 Criminal procedures
16. Intellectual property-linked trade practices
16-1 Acts of unfair trade practices
16-2 Industrial secrets
16-3 Rights of Action for unfair competition

As given above, the provisions are specified in extensive detail, unlike those of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) and other conventions. For example, provisions concerning patentability are stipulated in Articles 14 through 21, part of which is given below.

Article 14.
The Member Countries shall grant patents for inventions, whether goods or processes, in all areas of technology, that are new, involve an inventive step, and are industrially applicable.

Article 15.
The following shall not be considered inventions:
a) discoveries, scientific theories, and mathematical methods;
b) any living thing, either complete or partial, as found in nature, natural biological processes, and biological material, as existing in nature, or able to be separated, including the genome or germ plasm of any living thing;
c) literary and artistic works or any other aesthetic creation protected by copyright;
d) plans, rules, and methods for the pursuit of intellectual activities, playing of games, or economic and business activities;
e) computer programs and software, as such; and,
f) methods for presenting information.

Article 16.
An invention may be deemed new when not included in the state of the art. (The rest is omitted)

These provisions seem to be similar to those of the European Patent Convention (EPC). However, strict provisions are stipulated for biotechnology-based inventions. Additionally, Article 3 provides for compliance with the Convention on Biological Diversity (CBD) according to Decision 391 of the Andean Convention. Decision 391 of the Andean Convention involves the Access to Genetic Resources Law, as described previously. An objective thereof is "fair and equitable distribution of the profits to countries that possess genetic resources". The Access to Genetic Resources Law provides for appropriate procedures for the use of genetic resources or traditional knowledge. Further, Article 26 of the Common Intellectual Property Law provides that if the products or processes for which a patent application is being filed were obtained from genetic resources or traditional knowledge originating in any one of the member countries, applications for patents shall contain a copy of the contract for access or a copy of the document that certifies the license to use it. Thus, the tendency to stipulate strict provisions for the inventions obtained from natural resources is one of the features of the Common Intellectual Property Law according to Decision 486 of the Andean Convention.
Articles 7 and 8 concerning language provide that applications shall be filed in Spanish, otherwise they shall be accompanied by Spanish translations. This indicates that the Common Intellectual Property Law is a common law among the countries in the South America.

III. Conclusion
As described previously, the Common Intellectual Property Law according to Decision 486 of the Andean Convention just binds the legal systems of the member countries into the unified system, and does not provide for a common patent office such as EPC. However, the Common Intellectual Property Law covers a wide range of laws including both the patent law and the trademark law, and specifies provisions in extensive detail including both formality requirements and substantive requirements.
There is a lot of uncertainty about future global cooperation working for a unified patent system. However, it is considered that there are many findings from the Common Intellectual Property Law in the South America, which is one law that has been already enforced.

IV. Bibliography
i. "Outline of the Andean Community" (August, 2004), website of the Ministry of Foreign Affairs of Japan
ii. Official website of the Andean Community (http://www.comunidadandina.org)