A recent decision issued by the First Chamber of the Costa Rican Supreme Court has left many “canopy” and zip-line tour operators submerged in uncertainty. The decision seems to bring back to life an annulled patent granted in 1998, by which a Canadian citizen claimed the invention of a system by which a person, hanged from a harness and a pulley, slides down a cable anchored from tree trunks, enjoying the jungle view from above.

 

The activity became popular with Costa Ricans and tourists visiting the Central American country, famous for its biodiversity and exuberant nature. The tourist activity became known as a “canopy tour” or “zip line tour”. Ziplining became a key component of Costa Rica’s tourist offer, with more than 100 sites offering the tour. This decision from the Supreme Court has many worried about the impact it may have not only to the income of the tour operators, but also to the economy of the country. Tourism is among the most important components in Costa Rican GDP.

 

Interestingly many have spoken of the impact for tourists and tourism but few have reviewed the relevant patent issues behind the decision.

 

The origin

In October 1998, the Costa Rican Patent Office granted to Darren Hreniuk Mitchell patent No. 2532 for an “Elevated Forest Transport System Propelled by Gravity, Using Harness and Pulley Through a Simple Horizontal Line”.

 

The discussion

Several canopy tour operators requested the Costa Rican Patent Office (CRPO) to annul patent 2532. Their main argument at that time was lack of novelty but many procedural omissions were also claimed. The patent was initially annulled in 2001 by the CRPO; their decision later revoked by the superior arguing the defendant had had no access to the evidence filed by the plaintiffs. A new nullity action was later filed by the canopy tour operators. This action was denied by the CRPO but later accepted after the appeal filed by the plaintiffs was admitted in 2004 by the Third Section of the Administrative Court, at that time the superior administrative instance of the Patent Office. Mr. Hreniuk then filed a formal suit against the Costa Rican government arguing, among other, that the decision from the Third Section of the Administrative Court was not valid, as it was not the competent court to decide on second instance matters resolved by the Patent Office, as the law that created the new Administrative Court of Appeals (Tribunal Registral Administrativo) had already entered into effect by that time. The First Chamber of the Supreme Court of Justice accepted this argument, thus rendering void the decision from the Third Section of the Administrative Court and indirectly bringing back to life patent 2532.

 

Relevant Patent Issues

At this time, the central discussion has been procedural, but the key elements to determine whether patent 2532 is valid or not have not been revised; at least not thoroughly.

 

This patent is somehow a reflection of the evolution of the Costa Rican Patent Office, from its original dark ages to the much more enlightened present. In 1998, when this patent was granted, there was not a single examiner at the CRPO. The application was not properly reviewed to see that minimum formal requirements were met. Examination was performed by individuals with technical expertise but without any knowledge of patents, usually working at universities to whom the CRPO requested their technical assistance.

 

For this specific case, interestingly, the head of the local patent office requested assistance from the head of the Cuban Patent Office. The Cuban Patent Office attempted to give an informal opinion on the merits of the invention described, but no actual examination could be performed on an application that did not even had proper claims. Based on that opinion patent 2532 was granted.

 

The Costa Rican Patent Office is today a robust entity with a technically capable group of examiners under the direction of a qualified head of office. It is expected that if a new action is filed to annul the patent the CRPO will have very little to analyze to annul it. In the meantime, the patent holder is demanding every “canopy” or “zip line” tour operator in Costa Rica to sign a license agreement or face closing the facility by local authorities. Such demand would usually just bring a good laugh; but since just one patent-ignorant head of local government is needed to close a canopy tour operation and bring uncertainty to the tourists, some are seriously worried.

 

We’ll see how long it takes for common sense and patent law to take control of the issue and bring stability to the zip line disturbances.