- 1.What are the novelty or inventiveness requirements for a patent to be granted?
Absolute novelty is a requirement for patentability in Honduras. There are some exceptions to the absolute novelty bar establishing that disclosure of the invention by the inventor or assignee within a 12-month period prior to the filing of the Honduran application, or the recognised priority, does not constitute a novelty bar, provided that a statement regarding the date, place and means of disclosure is filed together with the Honduran application. Means of disclosure include a trade show, a published article, sales of the product, and so on. Publication of a patent application or issuance of a patent by a foreign Patent Office are the only means of disclosure excluded from the foregoing.
A patent must also have inventive level in view of the prior art.
- 2.What are the criteria for considering whether an invention is obvious in view of prior art?
The standard for determining whether a patent is inventive in view of the prior art is defined in articles 4, 6, 12 and others of the Honduran Industrial Property Law. These articles establish that an inventive activity is a creative process the results of which are not apparent from the state of the art to a person with technical knowledge in that field.
- 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?
Patents of Invention (Traditional and PCT National Phase)
- Protected for 20 years counted from filing date.
- Non extendable and non renewable.
Utility Models
- Protected for 15 years counted from filing date.
- Non extendable and non renewable.
Designs
- Protected for 5 years from filing date.
- Can be renewed for two additional five-year periods.
- 4.If an invention is conceived in your country, does the first filing have to be made there?
- 5.What are the foreign filing licence requirements if an application conceived in your country is filed first in another?
Identical voluntary and compulsory licence requirements apply to foreign and national patents. In that understanding, there are no restrictions on the contractual terms by which a patent owner is permitted to license a patent. According to the Law, a licence agreement must be recorded with the Patent Office in order for the same to be enforceable against third parties. A duly registered licensee will be entitled to exercise legal action to protect the patent rights, as if he or she were the holder, unless otherwise agreed. The working of a patent by a duly registered licensee will be deemed to be worked by its holder.
- 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?
The following will not be considered as an invention, and in virtue of this will be excluded from patent protection:
- business methods;
- computing programs per se; and
- methods of surgical and therapeutic treatment or diagnostic methods applicable to the human body and those related to animals.
- 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?
Patent litigation both at the administrative (initial) and judiciary levels has grown steadily over the past five years. It is not related to a specific industry, but cases relating to the pharmaceutical industry are more numerous.
- 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?
Several administrative sanctions can be imposed on a person found to have infringed a patent. These range from a fine to penal sanctions in the event of recidivism. The affected party may also bring an additional claim for damages and lost profit, in a civil law action. Damages and lost profit start accruing from the date on which the existence of an infringement can be proven. Honduran law tends to provide fair compensation to the affected party.
Injunctive relief is available and one or more of the following measures shall be requested:
i the cessation of the acts that infringe the rights;
ii the indemnification from the damages suffered;
iii the seizure of the objects resulting from the infraction, and of the means which had predominantly served to commit the infraction;
iv the prohibition of the import or export of the products, materials or means referred in (iii) above;
v the withdrawal of the objects or means referred in (iii) above from the commercial circuits, or their destruction, when appropriate;
vi the attribution in property of the objects or means referred in (iii) above. In this case the value of the assets will be imputed to the amount of the damages; and
vii the necessary measures to avoid the continuation or repetition of the infraction, including the destruction of the seized means compliant the (iii) above.
A bond will be required from the plaintiff prior to issuing the provisional injunctions needed to carry out any of the measures listed above. This bond has the goal to warrant damages to the defendant.
- 9.Is your country considering major changes to its patent system?
- 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?
No. There are no precise plans to join the Madrid Protocol. Honduras is a signatory of the TRIPS agreement.
- 11.Do your trademark clients make use of the Andean Community’s or Mercosur’s regional trademark systems and if so, how?
- 12.What rules govern the use of the registered trademark symbol, ®, or the unregistered trademark symbol, ™ , in your country?
Marking is not mandatory. The benefits of marking a mark as registered are mainly expanded recognition by consumers and competitors.
- 13.What are the main problems affecting trademark owners in your country, and what strategies have successfully addressed these problems?
Once a registration is obtained trademark protection is more or less straightforward in Honduras. The significant backlog at the Honduran Trademarks Office has been significantly reduced in the past four years. Trademark owners face greater challenges when trying to enforce rights before civil courts, which usually lack sufficient knowledge on the matter.
- 14.Does a trademark licence have to be recorded in your country to be effective?
Yes. A licence agreement must be recorded in order to produce effects against third parties and be recognised by the Honduran government.
- 15.What strategies have been successful in combating counterfeiting in your country?
The creation of the IP specialised unit of the General Attorney’s Office has been an important development in combating counterfeiting in Honduras. This unit works fairly well and if the owners of infringed rights formalise the respective actions, they can count with expedited results at fairly reasonable costs.
- 16.Does a foreign company’s website infringing trademarks constitute use of a trademark in your country?
According to Honduran law, a mark will be considered as used in Honduras when the products or services identified by the same can be found in the market under that mark in the quantity and regularity that normally correspond, having in mind the size of the Honduran market, the nature of the products or services in mention and the form in which such are usually commercialised.
- 17.Do you recommend that companies register their domain name in your jurisdiction if they do business there?
- 18.Briefly highlight any particularities of your trademark law that is not well understood by foreigners doing business in your country.
The so-called rehabilitation (non-use tax): a registered mark that is not being used in Honduras will not be cancelled on the grounds of non-use (even if not used in Honduras in any way) if the trademark owner has paid the rehabilitation (non-use) tax.
- 19.What are the key legal issues to be considered when registering a trademark in your country?
Protection of trademarks is territorial. Use abroad alone will not award trademark rights. Notoriety abroad only is not sufficient to defend a trademark in Honduras.
- 20.Can a multi-class trademark application be filed in your country?
- 21.Does your country allow trademark opposition proceedings? Can the deadline to file an opposition be extended?
Yes. Oppositions can be filed up to 30 working days (Monday to Friday) counted from the publication of a trademark in the official Gazette. The deadline to file an opposition cannot be extended.
- 22.Is copyright registration recommended for local packaging and/or marketing materials?
Not necessary. It can be acquired, however, rather inexpensively.
- 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?
- 24.What is the standard of contributory copyright infringement in your country?
Contributory copyright infringement is not expressly regulated in the Law. However, if the prior knowledge of the infringing activities on the part of the ‘facilitator’ can be proven, then it may be subject to similar fines and penalties as the ‘main’ infringer by a court of law.
- 25.Does your country recognise intellectual or industrial property protection in databases?
- 26.Is alternative dispute resolution used in your country to resolve intellectual property disputes? What are the benefits or dangers of using ADR?
Alternative dispute resolution methods are available in Honduras but they are not commonly used. This may change in the future as the very recently enacted revisions and additions to the Investment Law (July 2011) require the mandatory use of alternative dispute resolution methods before filing suits on intellectual property matters. This provision does not affect complaints before the General Attorney’s Office special IP Unit.
- 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?
No. A preliminary project to be able to record trademarks before Customs is in the making.
- 28.Describe any recent major developments or anticipated changes in your intellectual property law.
The Trademark Law Treaty (TLT) may become effective in Honduras within the next 12 to 18 months.
- 29.Describe any significant recent court decisions in your country relating to intellectual property.
The Honduran Trademarks Office has stated that although notoriety abroad is not enough in most cases, under certain circumstances (it is not clear which ‘certain’ circumstances) a trademark that is not used in the country (and therefore could not be deemed as notorious in strict application of the precepts of the Law) has some special characteristics or reputation that could give ground to the authority to deem it as notorious even if not so to a significant segment of consumers. (This decision was rendered in connection with very expensive upscale luxury goods not sold in Honduras but identified by a mark to which, notwithstanding such facts, the Trademarks Office conceded the status of notorious).
- 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.
The access to personal data solely shall proceed by court decree or at the request of the individual whose personal information are contained in such information or its representatives or successors.
Prohibition of release of information
No one may force another to provide personal information which may lead to discrimination or cause patrimonial or moral damage or risk to people.
- 31.Does your country’s data protection regime distinguish between sensitive and non-sensitive data?
Under our laws, the following is considered confidential personal data: all data related to ethnic or racial origin; physical, moral or emotional characteristics, home address, telephone number, including, particular email address, political affiliation, religious or philosophical beliefs, health status, physical or mental, personal or family heritage and any other related to honour, privacy, family or self-image.
- 32.Do special data protection rules apply to certain industries, such as financial services, health care, telecommunications? Give details.
The National and Insurance Banking Law has special regulations and is aimed at strengthening the Credit Risk Bureau. Some of the prohibitions, particularly those relating to home address, telephone number and some others, do not apply in these cases.
- 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?
- 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, but it is generally done as a result of self-regulation.
- 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?
The exportation of personal data to another jurisdiction is prohibited, unless expressly authorised by the individual.
Contributing Author
Contributing Editor
Questions
- 1.What are the novelty or inventiveness requirements for a patent to be granted?
- 2.What are the criteria for considering whether an invention is obvious in view of prior art?
- 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?
- 4.If an invention is conceived in your country, does the first filing have to be made there?
- 5.What are the foreign filing licence requirements if an application conceived in your country is filed first in another?
- 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?
- 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?
- 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?
- 9.Is your country considering major changes to its patent system?
- 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?
- 11.Do your trademark clients make use of the Andean Community’s or Mercosur’s regional trademark systems and if so, how?
- 12.What rules govern the use of the registered trademark symbol, ®, or the unregistered trademark symbol, ™ , in your country?
- 13.What are the main problems affecting trademark owners in your country, and what strategies have successfully addressed these problems?
- 14.Does a trademark licence have to be recorded in your country to be effective?
- 15.What strategies have been successful in combating counterfeiting in your country?
- 16.Does a foreign company’s website infringing trademarks constitute use of a trademark in your country?
- 17.Do you recommend that companies register their domain name in your jurisdiction if they do business there?
- 18.Briefly highlight any particularities of your trademark law that is not well understood by foreigners doing business in your country.
- 19.What are the key legal issues to be considered when registering a trademark in your country?
- 20.Can a multi-class trademark application be filed in your country?
- 21.Does your country allow trademark opposition proceedings? Can the deadline to file an opposition be extended?
- 22.Is copyright registration recommended for local packaging and/or marketing materials?
- 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?
- 24.What is the standard of contributory copyright infringement in your country?
- 25.Does your country recognise intellectual or industrial property protection in databases?
- 26.Is alternative dispute resolution used in your country to resolve intellectual property disputes? What are the benefits or dangers of using ADR?
- 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?
- 28.Describe any recent major developments or anticipated changes in your intellectual property law.
- 29.Describe any significant recent court decisions in your country relating to intellectual property.
- 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.
- 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.
- 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?
- 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?
- 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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