- 1.What are the novelty or inventiveness requirements for a patent to be granted?
According to Law 35 of 1996, the Industrial Property Law (Law 35), in order to be patentable, an invention must be new; the result of creative activity and susceptible of industrial use.
- 2.What are the criteria for considering whether an invention is obvious in view of prior art?
In order to consider that an invention is obvious in view of prior art, the authority must render a report which includes all that has been disclosed or made accessible to the public anywhere in the world by means of a concrete publication, oral disclaimers, its sale or commercialisation, its use, or by any other means, before the date of the application for patent in the Republic of Panama is filed; or, if the case may be, before the date of the recognised priority when it should be claimed pursuant to the Law. The prior art report will also include the contents of any pending prior patent application in Panama.
- 3.What are the different types of patent protection that can be obtained in your country, for example, utility, design? How do these types of patent protection differ?
Industrial Designs and Utility Models were considered and regulated as patents by various Laws until Law 35 was created on 10 May 1996. This came at the same time Panama subscribed into the Paris Convention. Law 35 divided Patents into three separate groups: Patents of Invention, Industrial Designs and Utility Models.
Utility Model protection is reserved for every shape, configuration or layout of parts of any appliance, tool, instrument, mechanism or other object, or of any part thereof, which allows a better or different operation, use or manufacture of the object to which it is embodied, or which gives to it any use, advantage or technical effect that it did not have before. Utility Models are granted for 10 years and cannot be extended.
Industrial Design protection, meanwhile, is reserved for any two-
dimensional or three-dimensional form that, if incorporated into a utility product, gives to it a special appearance and makes it suitable to serve as a type or model for its manufacture. Industrial Designs are granted for 10 years and can be extended for 10 more years.
- 4.If an invention is conceived in your country, does the first filing have to be made there?
No. If an invention is conceived in Panama, the first filing can be done in any part of the world.
- 5.What are the foreign filing licence requirements if an application conceived in your country is filed first in another?
In our opinion, if an application for a patent registration is conceived in Panama, then the same should be filed in Panama. We do not perceive any situation in which the application would be presented outside of Panama.
- 6.Are business and computer methods patentable? If yes, what are the standards for determining this? If no, are other technological areas (eg, in the field of genetics) that are not eligible for patent protection?
Article 14 of Law 35 states that business and computer methods are not patentable, as stated below:
The following are not to be considered inventions:
- projects, outlines, economic or business principles or methods, those referred to purely mental activities and games; and
- software programs per se, that refer to uses designated for computers.
- 7.Summarise the current level and nature of patent litigation in your country? Are the pending litigations related to a specific industry such as the pharmaceutical industry?
The amount of patent litigation handled by the Panamanian IP courts is minimal. However, most of them are cancellation or infringement proceedings related to the pharmaceutical industry.
- 8.What remedies are available for patent holders? For example, are monetary damages and injunctive relief available? If monetary damages are available, are such damages based on a reasonable royalty, lost profits or other provisions?
Article 172 of Law 35 states that the precautionary measures that can be ordered to ensure the protection of patent rights are the following:
- immediate cessation of the acts of infringement;
- withholding or holding as deposit the objects subject of the infringement and of the means employed exclusively to perpetrate the infringement;
- suspension of the import or export of the objects or means, to which the preceding paragraph refers to;
- posting of bond or other guarantee, by the alleged violator, for the payment of the eventual compensation for the damages and injuries caused;
- suspension of the code or operation permit, issued by the administrative authorities of the Colon Free Zone, a duty-free zone or export manufacturing zone established in Panama. Such suspension shall be lifted upon posting a bank, monetary or insurance bond or government bonds. The amount of the bond shall be in proportion to the estimate of the damage caused; and
- holding as deposit or retaining, by the corresponding customs authorities, the merchandise or objects subject to the act of infringement, which are going through customs or that are in transit in any part of the nation.
- 9.Is your country considering major changes to its patent system?
A project to reform Law 35 including patent issues is being discussed and prepared by the Panamanian Association of Industrial Property Agents.
- 10.Is your country a signatory to or likely to join the Madrid Protocol and if so, when? Is it a signatory to the TRIPs agreement?
As of this moment, Panama is not a signatory to the Madrid Protocol. However, Panama is party to the The Trade Related Intellectual Property Rights (TRIPS) contained in the Marrakech Treaty, approved by means of Law 23 of 1997.
- 11.Do your trademark clients make use of the Andean Community’s or Mercosur’s regional trademark systems and if so, how?
Panama is not a member of the Andean Community or Mercosur.
- 12.What rules govern the use of the registered trademark symbol, ®, or the unregistered trademark symbol, ™ , in your country?
In Panama, the use of the registered trademark symbol, ®, or the unregistered trademark symbol, ™, is optional. However, both symbols cannot be used if the trademark is not registered, since it is considered as an unlawful use of Industrial Property Rights.
- 13.What are the main problems affecting trademark owners in your country, and what strategies have successfully addressed these problems?
The main issue affecting trademark owners in our country is the importing, exporting, transit and sale of counterfeit products and by third parties. For example, the main industries affected by this are the textile, accessories, clothing and entertainment industries (music and film).
Government agencies such as the National Customs Authority and the Public Ministry (District Attorney Office), who specialise in the prosecution of IP crimes, are proactive in the protection of Trademark Rights.
The National Customs Authority of Panama is entitled to take border measures to prevent the import and export of counterfeit goods. The Directorate of Customs, on instructions from the proper authorities or when by any other means it has the knowledge that goods that are in customs or in any part of the national territory may be breaking the provisions of this Law 35 or of the Law of Copyright and Related Rights, could inspect or retain such goods.
The authorities of the Colon Free Zone and other duty-free or export manufacturing zones administered by the state will have the same faculties described previously when dealing with goods in transit in its territory.
In general, trademark owners are active in combating counterfeiting in the Republic of Panama. In particular, textile, accessories and clothing trademark owners are vigilant and proactive in the protection of their rights.
- 14.Does a trademark licence have to be recorded in your country to be effective?
Yes. License agreements must be recorded at the Industrial Property Department (DIGERPI).
- 15.What strategies have been successful in combating counterfeiting in your country?
There are different strategies used to combat counterfeiting in our country.
As mentioned above, the National Customs Authority of Panama is entitled to take border measures to prevent the import and export of counterfeit goods. In this regard, the Customs Authority, on instructions from the proper authorities or when by any other means it has the knowledge that goods that are in customs or in any part of the national territory may be infringing the provisions of Law 35 or of the Law of Copyright and Related Rights, could inspect or retain such goods.
The authorities of the Colon Free Zone and other duty-free or export manufacturing zones administered by the State, will have the same faculties described previously when dealing with goods in transit in its territory.
Trademark owners can also use the following actions to combat counterfeiting:
- civil actions before a Civil Circuit Court specialising in IP litigation;
- criminal actions before the District Attorney Office specialised in the prosecution of IP crimes; and
- border measures before the Customs Office.
- 16.Does a foreign company’s website infringing trademarks constitute use of a trademark in your country?
Yes. The use of infringing trademarks on internet websites (which are considered as advertisements) can be considered as Unlawful Use of Industrial Property Rights as indicated in article 164 of Law 35, described below as:
- those who in their own products or articles of commerce, or services, signs or commercial notice use a trademark, a name or a commercial name, identical or substantially similar to one owned by another person;
- those who in any way or manner use trademarks, names or commercial names in such a manner that it obviously reflects intention to imitate, in any way, a trademark, name or commercial name, registered in favour of another person; and
- those who sell, offer for sale or consent to sell or distribute articles or services bearing false trademarks or fraudulently applied, and those who identify their business or factories, using labels, stationery and other distinguishing features, bearing false trademarks, names or commercial names.
- 17.Do you recommend that companies register their domain name in your jurisdiction if they do business there?
Registering domain names in Panama (.com.pa) is not obligatory. However, it is highly recommended that companies that are conducting or will conduct business in Panama proceed to register their domain name. A company can operate in Panama with their current international address; however, a third party can proceed and register the companies domain name in Panama, which can affect said company.
- 18.Briefly highlight any particularities of your trademark law that is not well understood by foreigners doing business in your country.
The requirements to file an application for registration in Panama are very straightforward. Our Law does not have any complicated statutes or requirements in order to proceed and register a trademark.
- 19.What are the key legal issues to be considered when registering a trademark in your country?
The key legal issues when registering a trademark in Panama are the following:
- proceed to file the trademark application with all the required documents, within the established deadlines, to avoid office actions of any kind;
- confirm the trademark is registrable and is not prohibited by Law 35;
- surveying the market to ensure there are no similar trademarks. This ensures that there are no third parties that can file opposition suits when the trademark is published (in most cases, a trademark search is done to prevent this from happening); and
- use the trademark (either locally or internationally) to prevent third parties from filing a cancellation of the trademark based on non-use.
- 20.Can a multi-class trademark application be filed in your country?
No. Law 35 does not allow multi-class applications in Panama. Different applications must be filed per trademark, per class.
- 21.Does your country allow trademark opposition proceedings? Can the deadline to file an opposition be extended?
Yes, our law allows an interested third party to file opposition lawsuits. The period of time in which oppositions can be filed is within the two months from the day after the trademark application has been published in the Industrial Property Official Bulletin. The deadline to file an opposition cannot be extended.
- 22.Is copyright registration recommended for local packaging and/or marketing materials?
Article 107 of Law 15 states that the registration formality only has declarative character in order to provide additional legal safeguards for the owners and are not constitutive of rights. Therefore, the omission of registration or deposit does not harm the enjoyment or the enforcement of the rights acknowledged in the Law.
- 23.Are there any recognised legislative safe harbours that protect internet service providers in your country from liability for the activities of its users? If so, what are the requirements or processes Internet providers must follow to claim safe harbour?
Currently, there are no laws that provide safe harbours to protect internet service providers in connection with violations from its users. ISPs indicate in their service contracts with customers that they are not responsible for how their customers use the service provided to them, so we can say they have created their own “safe harbour”.
- 24.What is the standard of contributory copyright infringement in your country?
The standard contributory copyright infringement in Panama would be using technology to counterfeit goods. For example, downloading music using illegal means, burning it onto a CD and then selling it. Another example would be selling illegal copies of movies by downloading them on the internet or by taping them illegally.
- 25.Does your country recognise intellectual or industrial property protection in databases?
Since there is no national legal framework that regulates the protection of databases, there is no recognition of intellectual or industrial property protection regarding databases.
- 26.Is alternative dispute resolution used in your country to resolve intellectual property disputes? What are the benefits or dangers of using ADR?
The use of ADR for intellectual property conflicts is not frequent in Panama.
- 27.Can intellectual property rights be recorded with certain government agencies in your country, like Customs or the Border Control, to help prevent the import or export of counterfeit goods?
Intellectual property rights can be recorded at the National Customs Authority and Colon Free Zone, which help battle the import and export of counterfeit goods. It is highly recommended that a client proceed with these recordals.
- 28.Describe any recent major developments or anticipated changes in your intellectual property law.
On 2011, Panama and the US signed a Trade Promotion Agreement (TPA). According to said treaty Panama must ratify and implement the following agreements by the date of entry into force of the TPA:
- the WIPO Copyright Treaty (1996);
- the WIPO Performances and Phonograms Treaty (1996);
- the Convention Relating to the Distribution of Programme-Carrying Signals Transmitted by Satellite (1974);
- the Patent Cooperation Treaty (1970), as amended in 1979; and
- the Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure (1977), as amended in 1980;
- the International Convention for the Protection of New Varieties of Plants (1991) (UPOV Convention 1991) by January 1, 2010; and
- the Trademark Law Treaty (1994) by January 1, 2011.
In addition, Panama shall make all reasonable efforts to ratify or accede to the following agreements:
- the Patent Law Treaty (2000);
- the Hague Agreement Concerning the International Registration of Industrial Designs (1999); and
- the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (1989).
- 29.Describe any significant recent court decisions in your country relating to intellectual property.
There are no significant decisions rendered by our court system recently relating to IP matters.
- 30.Has your country adopted a national legal framework for the protection of personal information in computerised form? If so, generally describe the scope of the framework, who must comply with its requirements, and the consequences of non-compliance. If not, describe how your country regulates personal data security and privacy.
No. Panama has not adopted a national legal framework for the protection of personal data. In Panama at this time, there is no regulation regarding personal data security and privacy. However, most companies (multinational companies, telecommunication companies, banks, etc) that handle personal information in computerised form (databases) have their own regulation to protect their customers personal data. On the other hand, Panama Criminal Code provides sanctions from 2 to 4 years of imprisonment for those persons who unlawfully take over, interfere or uses in any way databases. This penalty will be increased from 1/3 to 1/6 if the database manipulated belongs to governmental entities, banks, insurance companies and other financial and securities institutions.
- 31.Does your country’s data protection regime distinguish between sensitive and non-sensitive data?
- 32.Do special data protection rules apply to certain industries, such as financial services, health care, telecommunications? Give details.
In Panama there are no specific laws that protect personal data, so there are no special rules that apply to certain industries. However, for example, telecommunication companies cannot give away personal information (ie, the name of the owner of a cellphone number) unless they are requested by a competent authority in Panama. Telecommunication agencies are required to indicate to competent authorities in which store a prepaid phone has been distributed. This prevents people from remaining anonymous by using prepaid phones, and using them for hijacking and crimes.
- 33.Are there registration, notice, or official licence requirements with government entities in connection with the collection, use, storage, transfer or sharing of personal data? If so, what are they?
There is no registration, notice or official licence requirements with government entities because there are no national laws regulating data protection in Panama. All laws pertaining to this subject are handled individually by the companies who wish to protect this information.
- 34.Does your jurisdiction require notice to affected individuals or a governmental authority in the event of personal data compromise? If so, in what circumstances and are there any special notice requirements?
- 35.Does your country require companies doing business there to publish and distribute a statement or policy describing its personal data security and processing practices?
No. However, companies do employ this practices in their own websites, contracts, etc.
- 36.Does your country require that individuals are given notice and consent to the collection, use, sharing or exportation of personal data?
- 37.Does your country impose restrictions on the exportation of personal data to another jurisdiction? If so, what are they?
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