According to the Costa Rican Patent Law, methods of treatment or diagnosis are considered non-patentable subject matter. "Second use" inventions are also excluded from patentability in Costa Rica.  

In jurisdictions where methods of treatments are unpatentable, the Swiss type claim was devised to enable the protection of the first, second or subsequent use of a known substance or composition. The practice of drafting Swiss type claims has not been accepted by the Costa Rican Patent Office (CRPO), considering that the format of such claims circumvents restrictions on the patentability of medical treatments under the Patent Law. 

Our offices will be closed from December 21st, 2012 to  January 2nd, 2013.  

The Patent and Trademark Office, the Administrative Court of Appeals and the Judicial Courts will be closed from December 21st to January 7th, 2013.   

Castro & Pal Abogados | IP COSTA RICA IIPP  CCOOSSTTAA  RRIICCAA IP COSTA RICA  Where Technology and Law Meet in Central America  

Ph. +(506) 2234-8204  Fx. +(506) 2234-8337  Los Yoses Sur, U. Veritas 225E. 50N. 50E.  P.O. Box 10488-1000  San Jose, Costa Rica.  

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Recently the Costa Rican Patent Office signed an agreement with the World Intellectual Property Organization (WIPO) in order to establish and develop a Technology and Innovation Support Center (TISC) to provide service to users of the patent office.  

Among the services provided, the TISC offers access to online patent and non-patent (scientific and technical) resources and industrial property-related publications, namely access to specialized databases to perform on-demand searches (novelty, state-of-the-art and infringement), as well as assistance in searching and retrieving technology information.  

WIPO promotes the establishment of TISCs in developing countries in order to give access to locally based, high quality technology information and related services, helping them to exploit their innovative potential and to create, protect, and manage their intellectual property rights.  

Patent term extensions are available in Costa Rica as an adjustment of the patent term due to delays in the patent registration process or regulatory approval of a pharmaceutical product.  

The Costa Rican Patent Law provides that patent term extensions  

are available for patents filed after April 25 th 2008 and in the following cases:  

a. When the Patent Office takes more the 5 years to grant the patent, from the date of filing in Costa Rica, or from the date it entered the national phase in Costa Rica for PCT applications.   

b. When the Patent Office takes more than 3 years to grant the patent, from the date examination was requested.   

c. For pharmaceutical products, when the approval for sale by the Ministry of Health has taken more than 3 years from the application.   

Actions attributed to the applicant will not be taken into account to calculate the delays. The term to compensate will be 1 day per day of delay, as long as the remaining term of the patent does not exceed 12 years. Nevertheless, the total term to compensate shall never be more than 18 months.

We would like to take this opportunity to thank you for your interest in participating in the AIPLA webinar "Prosecuting Biotech Patents in Latin America" on June 27, 2013 with our Partner Luis Diego Castro as one of the speakers. If you would like to receive a copy of the presentation, or if you need further information, please contact us at This email address is being protected from spambots. You need JavaScript enabled to view it. .  

We have added your email address to the distribution list of our News Bulletin. Our Bulletin is issued every two months and contains information regarding intellectual property in Costa Rica and other relevant subjects we feel may be of your interest. Castro & Pal Abogados will not disclose or share your information with any third party nor will we use your email address for any other purposes. If you do not want to receive our Bulletin you can safely unsuscribe using the link provided therein, or send us an email to This email address is being protected from spambots. You need JavaScript enabled to view it. .  

Sincerely,  

Castro & Pal Abogados | IP COSTA RICA  W h e r e T e c h n o l o g y a n d L a w M e e t i n C e n t r a l A m e r i c a  

Ph. +(506) 2234-8204  Fx. +(506) 2234-8337  Los Yoses Sur, U. Veritas 225E. 50N. 50E.

P.O. Box 10488-1000  San Jose, Costa Rica.  

w w w . c a s t r o p a l . com 

In the last years the Costa Rican Patent Office (CRPO) has seen a significant increase in the number of biotech patents filed. Among these the number of antibody patents is relevant. What is needed to obtain a patent on an antibody in Costa Rica?  

The Costa Rican Patent Law (CRPL) does not contain any specific provision with regards to antibodies or biotech patents in general. The Biodiversity Law makes a specific patentability exclusion of DNA as found in nature, but other than that no specific provision exists in Costa Rican laws or regulations.  

Given that applications for antibody patents continue to be filed and examined regularly, and most important, granted (not as regularly), some informal guidelines have been taking shape in the last years. The process to obtain such patents, including interviews with examiners, has given us the necessary information to identify this set of informal guidelines in place now at the CRPO.  

Costa Rican examiners are requiring the disclosure of the function and pharmacological effect of the antibody, not as its description, but mostly to overcome a rejection for lack of inventive step.

In the last years the Costa Rican Patent Office (CRPO) has seen a significant increase in the number of biotech patents filed. Among these the number of antibody patents is relevant. What is needed to obtain a patent on an antibody in Costa Rica?  

The Costa Rican Patent Law (CRPL) does not contain any specific provision with regards to antibodies or biotech patents in general. The Biodiversity Law makes a specific patentability exclusion of DNA as found in nature, but other than that no specific provision exists in Costa Rican laws or regulations.  

Given that applications for antibody patents continue to be filed and examined regularly, and most important, granted (not as regularly), some informal guidelines have been taking shape in the last years. The process to obtain such patents, including interviews with examiners, has given us the necessary information to identify this set of informal guidelines in place now at the CRPO.  

Costa Rican examiners are requiring the disclosure of the function and pharmacological effect of the antibody, not as its description, but mostly to overcome a rejection for lack of inventive step.

A recent policy issued by the Costa Rican Patent Office has established that payment of annuities should be done retroactively once an application is granted. The basis for said interpretation is that according to our patent law, annuities should be paid during all the validity term of an application. The patent validity term of 20 years is counted as of the international application date and therefore, annuities should be paid for all those years spanning from filing until expiration date. According to the same policy, it is not possible to pay in advance the annuities before granting, since the application is not yet considered valid.  

We disagree with the Patent Office's interpretation and will challenge it. However, in the meanwhile the policy is enacted and the PTO is enforcing it.  

We will keep you posted of any development in this matter.  

If you have any doubt or comments, please do not hesitate to contact partners Luis D. Castro at Ldcastro2@castropal or Simon Valverde at 

Last April Costa Rican Congress passed a new law for biomedical research. Law No. 9234 is titled Ley Reguladora de la Investigación Biomédica, or "Law for the Regulation of Biomedical Research" and comes as the expected solution to the chaos in which biomedical research was left after all clinical investigation on humans was suspended by the Constitutional Court in 2010.  

At that time the Constitutional Court, in decision 2010-001668, declared that all clinical investigation on humans should be suspended until laws were enacted to properly regulate the activity. The Court considered the human life and health were at risk with the activity, and such risk could not be regulated through executive decrees, as was the case at that time, but required a law passed by Congress. More than four years later Congress has finally pass the required law.  

Law 9234 includes provisions that aim to respect the rights of participants, including, among others, their health, security, informed consent, use of biologic samples, withdrawal as participant, privacy, data use and information.  

The law creates the Consejo Nacional de Investigación en Salud (CONIS) or "National Council for Health Investigation". This council will have technical, scientific and ethical duties, and will be independent but linked to the Ministry of Health. 

For several years, it was a common practice to file divisional applications filing the same set of claims as the ones in the parent application. Said practice allows the applicant not only to amend the claims of the divisional application in a later moment, but also to be already aware of the outcome of the parent application.  

The Costa Rican PTO did not object said practice in the past, but is now enforcing a policy in which a divisional application is accepted only if a problem of unity of invention arises. The PTO will determine if there is a problem of unity of invention, in which case the divisional application will be accepted for prosecution.  

Therefore, there have been several rejections in the past months due to the enforcement of said policy. The legal basis of the policy is not clear and can be interpreted as a restriction to a legal prerogative of the applicant to modify or divide the application. Nevertheless, there have been no judicial claims against the policy so far and we do not foresee a change in the near future. 

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