COSTA RICA Law and Practice Contributed by: Maricruz Villanea Villegas, Roberto Arguello, Edna Lopez and Leyla Harper-Dominique, IDEAS IP
1.5 Patent Infringement and Defences Direct and Indirect Infringement Under Law No 6867 and Law No 8039, direct infringe- ment occurs when a third party, without the patent owner’s authorisation, manufactures, uses, sells, offers for sale or imports the patented product or process for commercial purposes. For process pat- ents, direct infringement also covers products directly obtained by the patented process. Costa Rican law does not have an explicit statutory provision defining indirect or contributory infringement in the way some jurisdictions do. There is no specific article addressing the supply of components or means that enable a third party to infringe. In practice, indi- rect infringement would need to be pursued through general civil law principles on liability, which is a less developed area in Costa Rican patent practice. Scope of Protection The scope of protection is determined by the claims as granted. The description and drawings serve to interpret the claims but do not expand them. Costa Rican law does not have an express statutory doctrine of equivalents, and there is no well-developed case law applying such a doctrine. In practice, protection tends to be interpreted based on the literal reading of the claims, though a court could in principle consider the overall teaching of the patent when interpreting claim scope. A third party who was already using the invention in good faith before the filing date may continue that use, though they cannot expand it. Exhaustion Costa Rica applies international exhaustion. Once the patent owner or a licensee has placed the pat- ented product on the market anywhere in the world, the owner cannot use patent rights to prevent further commercialisation of that specific product, including its import into Costa Rica. Parallel imports are there- fore legal under Costa Rican law. Defences Prior use
Experimental use Use of the patented invention strictly for scientific research or experimental purposes does not consti- tute infringement. Regulatory approval (Bolar exemption) Acts carried out solely to obtain regulatory approval for a product, such as a generic pharmaceutical, are permitted under Costa Rican law in line with CAFTA- DR commitments. Compulsory licences Law No 6867 provides for compulsory licences in cases of non-working of the patent, public interest, national emergency or anti-competitive practices. The government may also authorise public non-commer- cial use. 1.6 Patent Enforcement and Remedies Courts and Bodies With Jurisdiction Administrative validity challenges are filed before the Registry of Industrial Property. Civil infringement claims are brought before the civil courts ( Juzgados Civiles ), with appeals to the Tribunal de Apelaciones and ultimately the Sala Primera . Criminal enforcement for patent infringement was repealed – criminal com- plaints are no longer available for patents, unlike trade marks and copyrights. Typical Timelines Litigation in Costa Rica is slow. Civil infringement cas- es typically take three to five years to first instance judgment; administrative nullity proceedings take two to three years. Appeals extend timelines further, dis- couraging litigation as a first option. Interaction Between Infringement and Validity Proceedings Validity (Registry) and infringement (civil courts) are handled by separate bodies. A defendant may raise invalidity as a defence before the civil court, which may stay proceedings pending a nullity action. Costa Rica is not a member of the European Patent Conven- tion (EPC); PCT applications are processed nationally through the Registry.
62 CHAMBERS.COM
Powered by FlippingBook