This country-specific Q&A provides an overview of Intellectual Property laws and regulations applicable in Bolivia.
What different types of intellectual property rights exist to protect: (a) Inventions (e.g. patents, supplementary protection certificates, rights in trade secrets, confidential information and/or know-how); (b) Brands (e.g. trade marks, cause of action in passing off, rights to prevent unfair competition, association marks, certification marks, hallmarks, designations of origin, geographical indications, traditional speciality guarantees); (c) Other creations, technology and proprietary interests (e.g. copyright, design rights, semiconductor topography rights, plant varieties, database rights, rights in trade secrets, confidential information and/or know-how).
(a) Inventions (e.g. patents, supplementary protection certificates, rights in trade secrets, confidential information and/or know-how);
(b) Brands (e.g. trade marks, cause of action in passing off, rights to prevent unfair competition, association marks, certification marks, hallmarks, designations of origin, geographical indications, traditional speciality guarantees);
designations of origin;
traditional speciality guarantees.
(c) Other creations, technology and proprietary interests (e.g. copyright, design rights, semiconductor topography rights, plant varieties, database rights, rights in trade secrets, confidential information and/or know-how).
rights in trade secrets.
What is the duration of each of these intellectual property rights? What procedures exist to extend the life of registered rights in appropriate circumstances?
Patents have 20 years of duration as of the date of filing;
Utility models have 10 years of duration as of the date of filing;
Industrial designs have 10 years of duration as of the date of filing;
Trademarks have 10 years duration from grant;
collective marks have 10 years duration from grant;
certification marks have 10 years duration from grant;
hallmarks have 10 years duration from grant;
designations of origin have 10 years duration from grant;
geographical indications have 10 years duration from grant;
traditional speciality guarantees have 10 years duration from grant.
copyrights have 50 years after the life of the author;
integrated circuit rights have a 10 years duration from the application date or exploitation date whichever is first;
plant varieties have different durations depending on the species. Either 20 or 25 years from application date.
rights in trade secrets will last indefinitely while the conditions for keeping those rights last.
Who is the first owner of each of these intellectual property rights and is this different for rights created in the course of employment or under a commission?
The first owner of each of these Intellectual Property right are the individuals or persons that created and participated in the development of invention.
This is different for rights created in the course of employment as these rights belong to the employer.
The first owner to the different types of marks is the person who first registers it provided that the application has not been made in bad faith or otherwise applied for against fair practices.
Copyrights belong to the creator of the work that is to be protected. Copyrights are divided into two types of rights: the moral rights and the patrimonial rights whereby moral rights are always for the author and where patrimonial rights can be transferred to third parties.
Integrated circuits belong to the designer of the work that is to be protected. When the integrated circuit has been made in the course of employment or under commission the right belongs to the employer or person commissioning the circuit.
Plant varieties belong to the creator of the new developed variety.
Which of the intellectual property rights described above are registered rights?
Designations of origin;
Semi-conductor topography rights;
Who can apply for registration of these intellectual property rights and, briefly, what is the procedure for registration?
The applications for most Intellectual Property rights are made by any person that deems that the creation is original and distinctive. Thus, the right to file belong to the original creator of the work or its successors in title.
Generally speaking, the procedure for registration of most IP rights entails the filing of an application containing the explanation of the desired right. This petition has to be filed along certain documents such as a PoA, an incorporation document; an assignment document, payment of fees, etc.
After the filing a pro-forma analysis is conducted to determine if all the basic requisites are in order. If they are, generally, a publication phase ensues where the application is published for third parties to file any objections they may have. Should there be any objections then the next stage is to address the same in a separate contentious proceeding called an opposition. Should the opposition be solved unfavourably then this is the end of the application process.
If the contentious process is successful to the applicant or there has been no opposition, then the next phase is the subject-matter analysis stage to determine compliance with the absolute requirements standards.
In the case of copyrights and analogous rights and in the case of commercial names, registration is not a requirement because rights arise from the creation itself of the work or use of the commercial name. Therefore, the author can elect to apply for registration but registration, in these specific cases, do not give rise to the actual right but serve more as proof of the existence of the specific right.
How long does the registration procedure usually take?
The registration procedure time span depends on the type of right being applied for. Inventions vary from patents, to utility models to industrial designs and within these, the type of technology being covered will also have a significant weight. As such, the span greatly varies from one to the next but if an average is to be made, an approximation to 5-7 years for patents; 1-2 years for utility models and 1 year for industrial designs.
In the case of trademarks, the registration span is about 1 to 1 ½ years if there are no prosecution issues. This is true for the different types of trademarks that an applicant can apply for. If the application encounters litigation, then the time frame can be extended by three times fold.
In the case of other rights, similarly, it will depend on the type of right being referred to. As such, plant varieties usually take about 6 months; semi-conductor topography rights range in several years to analyse a case so, all in all, it depends on the actual right being applied for.
Do third parties have the right to take part in or comment on the registration process?
Yes, third parties that have a legitimate interest in the registration process of an IP right can file their arguments regarding any IP right application usually right after the pro-forma review and after the publication phase. This period is the opposition period which lasts about 30 working days.
What (if any) steps can the applicant take if registration is refused?
Any applicant of any refused IP right has opportunities.
The first appeal opportunity for any IP right is called the revocation recourse and the same is filed before the same examiner that refused the application. This is not an appeal per se as it is not a different person that reviews the arguments but the same that will analyse the comments or observations made by the party.
If this recourse is dismissed or refused again, which is likely as the same person seldomly wants to admit its own analysis errors, then the applicant may file a hierarchical recourse this time before the National Director of the IP Office. This is recourse is a true appeal in the sense that it is analysed by a different person who has a different hierarchy within the trademark office.
Should this hierarchical decision still be refused then there is one more possible appeal, the administrative-contentious recourse, before the Supreme Court in the judicial venue. This appeal will analyse mostly nullity issues or wrongful application of the law but it will not get into the facts of a case.
What are the current application and renewal fees for each of these intellectual property rights?
Current official application fees for national companies or individuals
Current official application fees for foreign companies or individuals
Official renewal fees for national companies or individuals
Official renewal fees for foreign companies or individuals
Trademark, association marks, certification marks, hallmarks
Designations of origin
Variable by variety the most expensive being 1,221 US$.
Variable by variety the most expensive being 1,221 US$.
Rights in trade secrets
What are the consequences of a failure to pay any renewal fees and what (if any) steps can be taken to remedy a failure to pay renewal fees?
Failure to pay any renewal fees implies the loss of the right. Depending on the type of IP right, the IP owner may remedy the lack of payment within a grace period afforded to certain IP rights. If payment is still not made within this period, then the loss of right ensues and there is no ulterior possible remedy.
What are the requirements to assign ownership of each of the intellectual property rights described above?
The requirements to assign ownership of any Intellectual Property right is simply an apostilled assignment deed. A document attesting to the transfer of the IP right, duly notarized and apostilles is required both for validity against third parties and for recordal at the IP registry.
Is there a requirement to register an assignment of any of these intellectual property rights and, if so, what is the consequence of failing to register?
Yes, there is a need to record to assignment because in order for documents to be valid against third parties, these need to be recorded in a public record. Failure to do so entails that the assignment document will be valid only between the parties. The assignee will not be reflected as the owner and then use issues may arise for the new owner.
What are the requirements to licence a third party to use each of the intellectual property rights described above?
The requirements are that a license be recorded for any of the Intellectual Property rights so that protection and rights can be extended to the licensee and also invoked by the trademark owner.
Is there a requirement to register a licence of any of these intellectual property rights and, if so, what is the consequence of failing to register?
Licences of use should be registered to fully benefit from the rights belonging to trademark registrations. Failure to register a license will cause the license to be ineffective in regards to third parties and this may have consequences in keeping the registration of a mark (i.e. a mark may get cancelled).
Are exclusive and non-exclusive licensees given different rights in respect of the enforcement of the licensed IP, and if so, how do those rights differ?
Exclusive and non-exclusive licensees are not given different rights in respect of the enforcement of licensed IP as a matter of law. The law simply refers to licensees regardless of whether they are or not exclusive licensees.
Some differences, however, may come from the actual content of the specific license agreement whereupon the parties may add or supress capabilities to licensees as per the terms of the contract.
Are there criminal sanctions for infringement of any intellectual property rights, and if so, what are they and how are they invoked?
Local legislation provides for criminal actions for infringement of Intellectual Property rights, in addition to the economic recovery described above.
The actions that are punishable are usually those that involve deceit or fraud to consumers in the identification of goods or services. Also acts that involve the reproduction, distribution, publication or similar of copyrighted material.
To successfully file a criminal action, the plaintiff must prove that the infringer’s conduct conforms to the provisions included in the criminal code. In this regard, a criminal action is significantly more restrictive than a civil action, which has a broader and looser scope. In addition to the foregoing, a plaintiff must prove not only the actual malfeasance but also make a showing of ill will or bad faith which is not always easy. A showing of negligence will not meet the standard.
What other enforcement options are available for each of the intellectual property rights described above? For example, civil court proceedings, intellectual property office proceedings, administrative proceedings, alternative dispute resolution.
To enforce trademark rights, a plaintiff may choose from a range of judicial proceedings to administrative proceedings.
Among the judicial alternatives there are civil and commercial proceedings that can be filed to obtain relief from or to impose penalties to an infringer.
Civil proceedings, for example, are a type of proceeding whereby the goal is to stop the infringement and, namely, obtain the recovery of damages. This is to say, at this forum a plaintiff would expect to get awarded an amount for the actual damages suffered plus any deprivation of profit that may have occurred as a result of the infringement.
Available also are commercial proceedings, which as with civil actions, pursue the recovery of pecuniary losses, which encompass, the actual damage suffered plus profit deprivation. Usually, commercial proceedings revolve around unfair competition issues.
In addition to the options above, trademark owners can elect administrative proceedings. Administrative proceedings, are carried out before executive branch authorities and they can, at most stop, the infringement occurring but not award any type of penalties other than nominal administrative fines.
In general, an administrative action is a shorter process, very specific and the authorities are more knowledgeable on the subject-matter being litigated than in the judicial venue, therefore it is a type of venue that is more effective at stopping the actual undue use of infringement signs and materials but nothing else.
In the administrative domain, there are also other types of proceedings such as border measures, for example. This type of measure is designed at stopping at the point of entry any infringing product; however, the actual procedure is not yet well regulated or practical.
What is the length and cost of such procedures?
The length and cost of those procedures vary greatly from type of IP right, type of action elected and type of venue chosen.
Jurisdictional actions take a very long time and are significantly more expensive. Civil and commercial procedures can take years, maybe 3 years or more, to come to a first-instance decision. The cost is easily above US$ 10,000 for a first-instance resolution. Criminal procedures are also lengthy though in certain cases not so lengthy as with civil procedures. The cost, however, is far greater, and it may start above US$ 20,000.
Administrative actions, are the least time-consuming procedures to a certain extent. Trademark procedures take between a year to two years with the usual appeals.
Patent matters, on the other hands, can take several years to be resolved because not all domains have specialized staff that can adjudicate cases. It can take several years before a decision is issued. The cost of administrative procedures is generally quite inexpensive rarely going beyond US$ 1,000 to US$1,500 for 1st instance resolutions.
Where court action is available, please provide details of which court(s) have jurisdiction, how to start proceedings, the basics of the procedure, the time to trial, the format of the trial, the time to judgment and award of relief and whether any appeal is available.
The courts that are available are the ones that have been detailed above. Proceedings start with a writ of complaint. After its filing the other part has the right to file a response. An evidentiary period is opened for the submission of proof and the carrying out of hearings. Once this period closed, a period for filing final arguments opens where both parties can file their conclusions and comments, especially on the evidence and then a final decision is issued.
The format of these trials is usually written. This is the essential form despite some specific actions or situations that are oral. All these trials have the possibility of generally two appeals and these are also in writing.
Monetary reliefs are not effective as there are no statutory penalties. The system provides that awards come only actual damages shown so there are no awards for projected losses, for example. Punitive damages or compensatory damages would be largely nominal in comparison to other jurisdictions’ awards of damages.
What customs procedures are available to stop the import and/or export of infringing goods?
Pursuant to Article 86 of the General Customs Law, Article 120 of the General Customs Law Regulation and Title XV, Chapter III of the Decision 486 of the Andean Community, customs authorities may suspend the import or export of goods at the request of a trademark owner whose products may have been counterfeited.
The trademark owner who requested to suspend the import or export of goods has 10 days to supply the necessary information, so that the customs authorities can proceed with the inspection and identify the counterfeit trademarked goods.
If the deadline is not met, the detained goods shall be released.
If the deadline is met and the inspection reveals that the products are not counterfeited, the detained goods shall be released.
If the deadline is met and the inspection reveals that the products should be counterfeited, the trademark owner has 10 days from the notification of this information to initiate infringement proceedings to determine the existence of an infringement. In such latter case, counterfeit trademarked goods shall be seized or destructed by customs authorities.
Although such a procedure exists, it is not very effective for trademarks owners. For one, there is not enough information and detail on customs protection of intellectual property. Secondly, the timeframe to act is excessively short and it is practically impossible to fulfil the set of procedural steps, so that the provisions are utterly ineffective. Finally, customs authorities provide and receive arguments through the trademark office only, so that it is not the trademark owner who will interact directly with the customs authorities. This complicates the procedure even further, when the time to act is already short.
Are any non-court enforcement options or dispute resolution mechanisms mandatory in respect of intellectual property disputes in any circumstances? If so, please provide details.
There are no non-court or dispute resolution mechanisms that are mandatory in respect of Intellectual Property disputes. Certain disputes may be settled in mediation or arbitration and these are the ones that do not involve the local patent and trademark office. For example, the settling of a patent infringement matter. But for example, if a simple issue such as a coexistence agreement would be addressed through an alternative dispute mechanism, it may be moot because the local PTO has a final say in whether to accept such an agreement.
The sole exception to this is Copyright issues which require an inter-partes dispute resolution hearing prior to allowing the case to continue. However, even in this case the hearing is held within an administrative procedure opened as a result of a formally filed case.
What options are available to settle intellectual property disputes?
The options to settle Intellectual Property disputes in this jurisdiction are administrative disputes, jurisdictional disputes and certain inter-partes agreements. As such, disputes are mainly dealt with at an administrative level where for example, oppositions, nullities, cancelations or infringement actions are heard.
In jurisdictional courts, there is the option to file in civil and commercial courts for claims seeking a monetary compensation and where issues such as unfair competition, deviation of clientele, unjust enrichment or claims of damages are heard. Also, there is the option of criminal proceedings that seek compensation of damages and penalties to the infringers for fraud or similar actions.
Inter-partes mechanisms include those that the parties negotiate directly and come up with certain solutions to their claims.
What is required to establish infringement of each of the intellectual property rights described above? What evidence is necessary in this context?
In order to establish infringement, what is required, first and foremost, is the existence of a territorial right. This means that there has to be a valid and current IP right that is being infringed.
There has to be an unauthorized use by a third party.
The evidence needed in this context is showing the validity of the IP right infringed. Then there must be objective evidence of the occurrence of said infringement. For instance, a showing that there is an undue reproduction of a label, or the selling of a patented product or the reproduction of a work of art, etc. Then, there has to be the showing of a link between to the person committing the infringement and the infringement itself.
How does the court acquire any necessary information (fact or technical) and in what circumstances does it do so? In particular a) Is there a technical judge, a judge with technical experience, a court appointed expert, an expert agreed by the parties, and/or parties’ expert witness evidence? b) What mechanisms are available for compelling the obtaining and protecting of evidence? Is disclosure or discovery available?
The court acquires the necessary information via the parties who submit the evidence despite being mandated by law to find the factual information of, for example, an infringement in order to adjust the decision to the material truth of what is being litigated.
a) Is there a technical judge, a judge with technical experience, a court appointed expert, an expert agreed by the parties, and/or parties’ expert witness evidence?
Infringement cases are carried out at administrative venues, most always. Technically judges belong to the judicial sphere so the competent authority in administrative matters is an administrative officer.
These administrative officers have experience in trademark matters and in legal issues surrounding them. In patents, the technical proficiency may be less evident depending on the area of knowledge being debated. The parties or the competent authority, however, may appoint experts or agree on an expert to testify or issue an opinion, etc.
b) What mechanisms are available for compelling the obtaining and protecting of evidence? Is disclosure or discovery available?
Disclosure or discovery is not an actual procedural obligation. Parties prepare and collect their own evidence and they have to file it with the required formalities but there is no typical adversarial handling of the evidence.
How is information and evidence submitted to the court scrutinised? For example, is cross-examination available and if so, how frequently is it employed in practice?
Most proceedings are written thus, cross-examination or testimonies are usually not part of IP proceedings,
Written evidence must, most always, come in legalized form and it is reviewed for this requirement. If the evidence complies with the legalization chain, then it is accepted for consideration.
What defences to infringement are available?
One defence usual to most all IP rights is that the right does not exist or that the use being made does not affect the registered right because of given differences.
In patent law, a common defence may also be that the subject of protection has fallen into the state of the art or that the right has expired.
In trademark law, a frequent defence may be that the mark is generic or descriptive and that thus, there can be no infringement over such elements of a mark given that this jurisdiction has no disclaimer practice. Frequently, another type of defence is filing for the cancellation of the mark on which the infringement is based.
Who can challenge each of the intellectual property rights described above?
Usually, third parties that have a legitimate interest have the right to oppose an application for an IP right. However, this criterion is broad, so that, in fact, any person can challenge an IP right. The term of the art used to establish who can challenge an Intellectual Property right is “anyone with a legitimate interest”, which means most anyone with slight nuances depending on the specific IP right.
When may a challenge to these intellectual property rights be made (e.g. during any registration process or at any time during the subsistence of the right)?
IP rights can be challenged at different times depending on the type of challenge and the type of IP right. Most challenges are made during the registration process; however, some others can be made at specific times during the subsistence of the right. Patent or trademark applications can be challenged during the opposition period which occurs during the registration process. Other challenges can be made during the subsistence of the right such as nullity actions and the challenge period will depend on multiple factors.
Briefly, what is the forum and the procedure for challenging each of these intellectual property rights and what are the grounds for a finding of invalidity of each of these intellectual property rights?
An Intellectual Property right is challenged at the administrative forum.
In trademarks, an interested person may file an opposition during the registration process, i.e. within 30 days from the date on which the registration application has been published.
An interested person may also file a cancellation action for non-use of the trademark or because the trademark has become a common sign and has therefore lost its distinctiveness.
In yet another example, a person with a legitimate interest may file a nullity action when the distinctive trademark was registered but had inconsistencies. This action will have different statute of limitations to be counted from the date on which the contested registration was granted depending on varying factors.
In Patent Law, an interested party may file an opposition during the registration process, i.e. within 60 days from the date on which the registration application has been published.
An interested party may also file a nullity action when the invention does not meet the requirements of patentability or there are other kinds of inconsistencies.
This action will have different statutes of limitations from the date on which the contested registration was granted depending on varying factors.
Are there any other methods to remove or limit the effect of any of the intellectual property rights described above, for example, declaratory relief or licences of right?
Yes, there are other methods to remove or limit afforded Intellectual Property rights.
In Patents exceptions to the afforded IP rights are the fair use doctrine. Thus, academic or scientific uses for example are permitted.
Another limitation occurs when mandatory licenses are imposed due to national emergencies of some kind.
In Trademarks, a limitation occurs with commercial names. When an entity has been using a commercial name without a registration then, a junior trademark registrant cannot stop the use in the commercial name domain.
Another example is the trademark exhaustion. When the trademark owner has introduced its product into the market then, said trademark owner cannot prevent the legal import of original products into the market.
These are just some examples of how IP rights are affected or limited by certain provisions.
What remedies (both interim and final) are available for infringement of each of the intellectual property rights described above?
The available remedies for infringement of each of the Intellectual Property rights, in general, are:
Stopping and removal of the infringement material from the market circuit or from storage areas either through injunctive relief measures or as part of the final decision.
The award of monetary compensation for the damages although the assessment of the damage and the proving of the actual damage do not afford for the actual damages caused.
The imposing of certain penalties to the infringer depending on the kind of infringement.
What are the costs of enforcement proceedings and is any kind of costs recovery available for successful parties? Is there a procedural mechanism enabling or requiring security for costs?
The cost of enforcement proceedings will vary on a case-by-case basis where the length of the actual proceeding; the type of infringement; the extensiveness of the infringement; the geographical areas where the infringement occurs; the venue of the proceeding, etc., are relevant factors. For a first instance proceeding the costs can range between US$ 5,000 to US$ 15,000.
Costs are recoverable, however, the recovery of these are statutorily assigned so generally they cover a small portion of the actual expenses in the jurisdictional venue. In the administrative venue, each party is responsible for its own costs.
There is no procedure for enabling security for costs.
Has the COVID-19 pandemic caused any changes (temporary or permanent) to the protection or enforcement of intellectual property? For example, changes to deadlines, filing or evidence requirements or court processes.
The COVID-19 pandemic has caused changes to the protection and enforcement of IP rights. For one, the local IP Office has been closed for about a year on most kinds of matters, namely, litigation, so this has caused a significant delay in the processing of cases. There have been also some security measures enforced which have had an impact in the manner in which proceedings have been scheduled and carried out. While this impact is supposed to be temporary, it looks like this will still linger on for some time.
Estimated word count: 5388
Privacy & Cookies Policy