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At-a-glance: Industria y Comercio Superintendencia (SIC) Carrera 13, No 27-00, Pisos Mezanine, 5 y 10, Bogotá Tel: +571 587 0000, Fax: +571 587 0284 Email: info@sic.gov.co Website: www.sic.gov.co Political and legislative developments during t... [more]

Political and legislative developments during the past two years have significantly boosted intellectual property protection in Colombia, giving credence to the country's political leaders who had vowed to make IP a priority.

Between March and August of 2012, Colombia acceded to the World Intellectual Property Organisation's Trademark Law Treaty (TLT); the free trade agreement (FTA) with the US came into force after five years of signing; and the country joined the Madrid Protocol on trade marks. Colombia also signed a free trade agreement with South Korea recently, not yet in force and is in negotiations to sign an FTA with Japan as well.

While it is still early to fully assess the impact of these developments, reactions within the IP community have been positive.

"The implementation of the [TLT] has brought very positive outcomes," including an increase in filings, notes one partner. The treaty, which came into effect in April 2012, enables an entity to file multiclass applications. As a result, it has been well received by companies seeking to protect their trade marks in Colombia. It also makes it easier for entities to prove use and notoriety of their trade marks abroad.

The free trade agreement also reinforces protection of IP rights. "The Agreement provides for improved standards for the protection and enforcement of a broad range of intellectual property rights, consistent with US and emerging international standards of protection and enforcement," according to the Office of the US Trade Representative. It does so by requiring the Colombian government to take necessary measures to protect copyrighted works against online piracy, adopt strong criminal penalties for copyright and trade mark infringement and implement patent and test data protection that respects the Doha Declaration on the Trade-Related Aspects of Intellectual Property Rights (TRIPs) agreement and public health.

The Madrid Protocol, which came into force in Colombia in August 2012, offers trade mark owners a cost-effective, user friendly and streamlined means of protecting and managing their trade mark portfolio internationally, according to the World Intellectual Property Organisation (WIPO).

Colombia, which is the region's third-largest economy, is the second Latin American country after Cuba to join the international trade mark system. Through this system, an entity may protect a mark in 86 countries plus the European Union by filing one application, in one language and for one fee.

In addition to implementing these international treaties, Colombia has also made changes to its procedural laws which have cut down dramatically on trial times. As of July 2012, IP owners are able to file trade mark and patent infringement actions before the country's regulator, SIC, meaning faster proceedings handled by an authority that has relevant knowledge.

"This means that a judge who understands the issues is in charge and a case doesn't take longer than a year to conclude," remarks one partner. "This is compared with six to seven years it used to take until recently."

The country's patent and trade mark authority has also undergone a positive shift. With José Luis Londoño Fernández at the helm since October 2010, "the patent office has become more open-minded, implementing positive changes and speeding up the filing process", says one partner. "It used to take five or five and a half years for a patent application to be reviewed. Now, it's down to four years and they hope to cut it down to three."

The SIC has also shown a shift towards recognising patentability of polymorphs and computer-implemented inventions.

In one instance, the patent authority granted patent privilege to F Hoffmann-La Roche for a polymorph. Until recently, the patent office was reluctant to recognise the patentability of these types of inventions based on a lack of inventive step.

Another precedent-setting case involved a patent for a computer-implemented invention on behalf of Schlumberger Technology. While software is not considered patentable in Colombia, the SIC's decision to grant patent protection in this case indicates its recognition of the patentability of processes that involve software.

Copyright law is also growing in terms of activity and importance. "Colombia has become a significant producer of theatre, TV [shows] and movies," notes one attorney. "The government subsidises up to 40% of all movie-making costs for local and foreign films."

The outlook for Colombia's IP market is certainly promising. "The Colombian IP market is growing because the economy is growing," notes another practitioner. That, combined with an increasing awareness among local companies of the value of protecting their intellectual property, justifies high expectations.