This article is a continuation of a two-part series on Honduras, written by Ricardo Mejia, Partner & Intellectual Property Director of Bufete Mejia & Asociados. The following excerpts were selected from Getting the Deal Through – Patents 2013:
Can a patent be obtained to cover any type of invention, including software, business methods and medical procedures?
The following will not be considered an invention, and by virtue of this will be excluded from patent protection:
- computing programs per se; and
- methods of surgical and therapeutic treatment, or diagnostic methods applicable to the human body and ones related to animals
Who owns the patent on an invention made by a company employee, an independent contractor or multiple inventors? How is patent ownership officially recorded and transferred?
The right to the patent will belong to the inventor without prejudice to what it is established in articles 12 and 13 of the Honduran Industrial Property Law. When several people produce an invention jointly, the right to the patent will belong to them in common. The right to a patent can be transferred by acts between living persons or through hereditary succession. If several people independently effect the same invention from one another, the patent will be granted to the person (or his or her beneficiary) who files the patent application first or who claims the earliest priority date according to article 141 in the Honduran Industrial Property Law.
According to article 12, when an invention had been produced in fulfillment or compliance with a work or service contract or employment contract, the right to the patent for that invention will belong to the person who contracted the work or service, or to the employer, as it shall correspond, except for a contractual provision otherwise.When the invention should have an economic value much higher than the one the parties could have reasonably foreseen at the time of concluding the contract, the inventor will have the right to special compensation, the amount of which will be set by the competent court in the absence of agreement between the parties. Any contractual provision less favorable to the inventor than the ones provided in this article will be null.
According to article 13, if an employee who was not under the obligation in his or her employment contract to perform an inventive activity should fulfill an invention in the area of activities of the employer, or through the use of data or means to which he or she would have access because of his or her employment, he or she will immediately communicate this fact to his or her employer in writing. If, within a term of two months starting from the date on which the employer would have received such communication, or should have knowledge of the invention by any other means, applying the earliest date, the employer notifies in writing the employee his or her interest in the invention, the employee will have a right to the co-ownership of the patent, having an equitable right to the profits that the use of the invention should occasion. If the employer does not carry out the notification within the established term, the right to the patent will belong to the employee.
Must a patent holder mark its patented products? If so, how must the marking be made? What are the consequences of failure to mark/false patent marking?
There are no marking requirements under Honduran law. In cases of false patent marking, unfair competition actions could, theoretically, be filed.
To what extent is it possible to block the importation of infringing products into the country? Is there a special tribunal or proceeding available to accomplish this?
As part of the DR-CAFTA agreements, the Honduran Customs Office may block the importation of infringing products into the country. However, in practice, the IP special unit of the Honduran Customs Office will ask the Patent Office to notify the attorneys of the registered owners of a possible infringement; they will then have up to 48 hours to initiate an action before the IP unit of the Attorney General’s Office to work with the Customs Office and achieve the seizure of the goods before they are released in the Honduran market.
The Customs Office also allows for some firms that handle a large number of cases to provide them with lists of relevant patents and products in order to receive forewarning when an importation petition is filed or when the merchandise arrives at the port of entry.
Are there any restrictions on the contractual terms by which a patent owner may license a patent?
There are no restrictions on the contractual terms by which a patent owner is permitted to license a patent. According to the Honduran Industrial Property Law, a license 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. Thus, even though it is not mandatory to register a license agreement, it is advisable to do so so that the license can exercise his or her legal rights, particularly against third parties.
How long does it typically take, and how much does it typically cost, to obtain a patent?
The average time for obtaining a Honduran patent varies depending on the field of technology. Generally, it takes from two to three years to obtain a patent.
The cost of obtaining and maintaining a patent in Honduras, from filing to expiry date (20 years in all cases), will be around US$4,000 to US$5,000.
Additionally, the cost of Spanish translations of the specification and the cost of any other documents filed in a foreign language during the prosecution of the application need to be taken into account.
How is the duration of patent protection determined?
Honduran patents (in all fields) are granted for 20 years counted from the effective filing date of the patent application. For Convention and non-Convention applications, the effective filing date is the filing date in Honduras. For PCT applications, the effective filing date is the date of filing of the international patent application.
Patents or registrations expire and the rights they protect normally fall into the public domain in the following cases:
- at the end of the 20-year term; and
- for failure to pay patent annuities (a total of 20 annuities).
Expiration due to the expiration of the patent duration term will not require an administrative resolution.
Utility models have a term of 15 years from the effective filing date. Design registrations have a term of five years (renewable for two additional periods of five years) from the effective filing date.
For more information on filing your patent into Honduras, please feel free to contact us at email@example.com.