(no official English version)
of October 30, on patents
No. 67 – Year 26 – 26.11.2014 Official Gazette of the Principality of Andorra
Official Gazette of the Principality of Andorra 4737 – 4754
Download the original PDF document of Law 26/2014 click here
Bills 5 June 2014 No. 44/2014 catala version by clicking here
Consult the original version in Catalan click here
French law March 13, 2015 Double taxation agreement France Andorra clicking here
- Article 20: Obliged to pay the fee
- Article 21: Merit and payment
- Article 22: Return of fees
- Article 23: Fees
- Additional provision
- Second transitional provision
- Third transitional provision
- Derogatory provision
- First final disposition
- Statement of reasons
- Chapter one Form of protection and patentability
- Article 1 Protection of inventions
- Article 2 National treatment of foreign individuals and legal entities
- Article 3 Patentability conditions
- Article 4 Exceptions to patentability
- Article 5 Novelty
- Article 6 Inventive activity
- Article 7 Industrial applicability
- Article 8 Harmless disclosure
- Chapter two Right to a patent; mention of the inventor
- Article 9 Right to a patent
- Article 10 Inventions by employees and by order
- Article 11 Inventions of public and parapublic administration staff and teachers
- Article 12 Mention and designation of the inventor
- Chapter three The application and the procedure until the concession
- Article 13 Multiple applicants
- Article 14 Application requirements
- Article 15 Date of deposit
- Article 16 Description of the invention
- Article 17 Claims
- Article 18 Summary
- Article 19 Unit of invention
- Article 20 Division of a request
- Article 21 Right of priority
- Article 22 Claim of priority
- Article 23 Effects of the right of priority
- Article 24 Amendment, correction and withdrawal of a request
- Article 25 Publication of the patent application and consultation of the files
- Article 26 Patent grant publication
- Article 27 Formal examination of the application and grant of the patent
- Article 28 Principle of proof
- Article 29 Documents written in a non-official language
- Article 30 Register of Patents
- Article 31 Rights conferred by a patent, acts of infringement
- Article 32 Indirect infringement
- Article 33 Limits of patent rights
- Article 34 Special cases
- Article 35 Rights of the previous user
- Article 36 Provisional protection
- Article 37 Duration of the patent
- Article 38 Extension of protection and interpretation of claims
- Article 39 Change in the ownership of the patent application or the patent
- Article 40 Judicial transfer of the patent application or the patent
- Article 41 Registration of the new patent holder and subsequent exploitation
- Article 42 Joint ownership of the patent application or the patent
- Article 43 Expropriation of the patent
- Article 44 Obligations ancillary to the assignment or license
- Chapter Six. Contractual licenses
- Article 45 License contract
- Article 46 Rights of the Aryan graduate
- Article 47 Rights of the licensor
- Article 48 Right to exercise an action; actions; procedural rules
- Article 49 Counterclaim or exception to the action for the violation of the rights derived from a patent
- Article 50 Compensation for damages
- Article 51 Precautionary measures
- Article 52 Retention at customs
- Article 53 Declaration of non-violation
- Chapter eight. Changes in patents, waiver and invalidation
- Article 54 Changes in patents
- Article 55 Resignation
- Article 56 Termination
- Article 57 Declaration of Nullity
- Article 58 Effects of the declaration of nullity
- Chapter nine. Validation of European patents in the Principality of Andorra
- Article 59 Effect of validated European patents
- Article 60 Application of the Cooperation Treaty in the Matter of Patents
- Article 61 International applications submitted to the Patent Office as receiving office
- Article 62 The European Patent Office as a designated or elected office
- Article 63 National processing
- Article 64 Entry into the national phase
- Article 65 Modification of claims, description and drawings before the appointed or elected office
- Article 66 The European Patent Office as the responsible administration
- Article 67 Re-establishment of rights
- Article 68 Resources
- Article 69 Jurisdiction
- Article 70 Representation before the Patent Office
- Article 71 Patent agents
- Article 72 Summonses
- Article 73 Fees
- Derogatory provision
- First final disposition. Regulatory deployment
- Second final disposition. Regulatory deployment
- Third final provision. Trademarks and Patents Office of the Principality of Andorra
- Fourth final disposition. Entry into force
- Law 27/2014, of October 30, on Patent Office fees
- Statement of reasons
- Article 1 Creation
- Article 2 Management
- Article 3 Generating fact
- Article 4 Obliged to pay the fee
- Article 5 Merit and payment
- Article 6 Payment of annuities
- Article 7 Return of fees
BOPA 4737] Article 20: Obliged to pay the fee
The person obliged to pay the fee is the national natural or legal person, who requests one or more of the services constituting the generating events.
- The fee is accrued at the time of requesting the constitutive service of a generating event.
- Failure to pay the fee within the corresponding period will result in the non-publication of the extraordinary issue of the Official Gazette of the Principality of Andorra or the non-publication of unofficial announcements in the Official Bulletin of the Principality of Andorra.
The fees paid must be returned ex officio to whoever is obliged to pay them if the service is not provided for reasons attributable to the Official Bulletin Service of the Principality of Andorra.
The fees for the publication of an extraordinary issue and the insertion of an unofficial advertisement are as follows:
a) Publication of an extraordinary €100 issue
b) Publication of an unofficial announcement €50
The General Budget Law can update the rates in the Official Gazette of the Principality of Andorra.
First transitional provision
The Official Gazette of the Principality of Andorra on paper will continue to be published, with an official character, until the date determined by the Government, by means of an agreement that must be published in the Official Gazette of the Principality of Andorra. This date cannot in any case be later than December 31, 2014.
The files that make up each digital edition and the paper copies of the issues of the Official Gazette of the Principality of Andorra referred to in article 16.2 will be delivered to the National Archives of Andorra from the date determined by agreement of Government published in the Official Bulletin of the Principality of Andorra.
The Official Gazette Service of the Principality of Andorra decides the structure of the Official Gazette of the Principality of Andorra until the structure of the digital edition is determined by regulation, in accordance with the provisions of article 2.4.
The provisions of a normative nature of equal or lower rank to that of this Law that oppose or contradict it, and in particular the Law of the Official Gazette of the Principality of Andorra, of May 19, 1983, remain repealed.
The Government is empowered to issue the provisions necessary for the deployment, effectiveness and execution of this Law within six months from the day after the date of its publication in the Official Gazette of the Principality of Andorra .
Casa de la Vall, October 30, 2014
Vicenç Mateu Zamora
We the co-princes sanction and promulgate it and order its publication in the Official Gazette of the Principality of Andorra.
President of the French Republic
Coprincipe of Andorra
Joan Enric Vives Sicily
Bishop of Urgell
Coprincipe of Andorra
Given that the General Council in its session on October 30, 2014 approved the following:
Statement of reasons
It is a recognized fact that the knowledge economy is one of the important drivers of developed societies, and that it is constantly evolving. In the current context of the expansion of innovative activities, it is important and necessary for the Principality of Andorra to promote productive activities that, in order to sustain themselves in sectors such as research, development and innovation, provide high added value and they have a positive impact on the competitiveness of our country. It is also necessary to promote innovation and technological development, taking into account the challenges and opportunities that this evolution poses, facilitating access to knowledge and its dissemination, particularly with regard to inventive activities.
In this sense, the patent is an ideal tool to promote the birth and consolidation of these activities, and regulates the conditions for the circulation of ideas and technologies between countries, as a determining factor for the efficient operation of the systems of innovation Advances in the state of the art, without ignoring that on rare occasions they are the result of one-off genius, respond in the vast majority of cases to systematic research work, deployed over the years, which only in limited cases fulfills the objectives sought. The patent is a legal instrument that gives its holder an exclusive right to exploit their invention, materially rewards their enormous creative effort and contributes to the profitability of the capital invested in this inventive process.
The countries that have opted more decisively for the protection and harmonization of industrial property are the ones that today have more competitive innovative industries, a fact that shows the [BOPA 4738] correlation that exists between the protection of research and creation , on the one hand, and the quantitative and qualitative growth of inventions and technology, on the other.
The Law aims, first of all, to improve and modernize the Andorran legal system to reach an optimal level in terms of the protection of inventions. The establishment of different and complementary limitations or precautions that govern the most advanced economies in our environment would place the Principality of Andorra in a situation of economic disadvantage which would imply that global investments in the most innovative sectors would be directed towards others states that offer better protection.
Secondly, this new law aims to harmonize the regulations on patents with the regulations of the countries around it. Patent law is, without a doubt, one of the most harmonized branches of law in existence, so you can see a surprising similarity between the laws of different states. The harmonization of current legislation is based on the need to provide companies and innovative industries with universally uniform rules, in order to guarantee maximum legal certainty, as well as the reduction of costs to carry out exchange transactions in this very sensitive and necessary matter. In response to this challenge, this Law replaces the Patent Law of June 10, 1999, to fully adapt it to common patent law,
Harmonization with European Community law is mostly intended through the adaptation of the Law to the most relevant articles of the regime provided for in Directive 1998/44/EC of the European Parliament and the Council, of July 6, relating to the legal protection of biotechnological inventions, and in Directive 2004/48/EC of the European Parliament and the Council, of April 29 , relating to the respect of intellectual property rights.
In the same way, the Law incorporates the provisions necessary to facilitate the accession of the Principality of Andorra to the most important international treaties in the field of patents. In this sense, the Law incorporates certain provisions whose purpose is to facilitate the conclusion of a European patent validation agreement between the Principality of Andorra and the European Patent Organization. Likewise, the Law incorporates the necessary provisions to facilitate the accession of the Principality of Andorra to the Treaty of cooperation in matters of patents, made in Washington on June 19, 1970 .
Finally, the purpose of the Law is to guarantee respect for the two most essential international treaties in the field of industrial property, which are the Paris Union Convention for the Protection of Industrial Property, dated March 20, 1883 , already ratified by Principality of Andorra, and the Agreement of the World Trade Organization on trade-related aspects of intellectual property rights.
The Law grants a property right, for a non-extendable period of twenty years, to inventions that meet the patentability conditions established in its provisions. An invention can be patented if it meets the requirements of novelty, inventive step and industrial applicability. The present patentability conditions, as well as their exceptions, incorporate the specialties that generate biotechnological inventions.
The patent gives its inventor the property right that derives from it, without prejudice to the specifics relating to inventions generated in the execution of an employment relationship or in the field of public research.
The Law establishes the administrative mechanisms for obtaining a patent. In this sense, it is necessary to address a request to the Patent Office, which grants the patent in accordance with the request, once the relevant examination procedure has been passed. The grant of the patent will result in a registration. The model that the Law opts for is that of mere deposit, so that the patentability requirements – except for the obvious lack of novelty – will not be examined by the Patent Office.
This lack of substantive examination does not imply, however, as is the case in the Patent Law of June 10, 1999, that patents are subject to a kind of resolution condition under which, if they are not confirmed in the first ten years, they decay. From the entry into force of this Law, Andorran patents will be understood to be fully valid throughout their validity, given that the system of mere deposit does not allow determining whether the patent meets the indispensable requirements for its validity; in any case, the exercise of the powers derived from the patent must be subject to certain precautions. The request for verification proceedings and precautionary measures, as well as the exercise of actions based on a patent, must be accompanied by a principle of proof according to which the title in question meets the conditions of novelty,
The Law does not establish a numerus clausus of means of proof, but in any case European patents and also national patents granted after having passed a substantive examination will have this consideration provided that, in the latter case, they have been granted by a procedure through which the patentability conditions required in this Law have been examined.
The effects of the patent are regulated in terms equivalent to those governed in the countries around us, and in accordance with the terms provided by the international treaties in force in the matter.
The Law also regulates the aspects of the patent that derive from its status as a property title.
Likewise, the Law establishes the actions that can be taken against the infringement of the rights conferred by the patent on its owner.
Finally, the last chapter is dedicated to the establishment of the Patent Office fees for the services provided by this administrative body, which must be set by law.
Patents protect inventions in accordance with the provisions of this Act.
Foreign individuals and legal entities will enjoy, with regard to the protection of inventions in the Principality of Andorra, the advantages that the respective laws currently or in the future grant to their nationals, provided that this treatment is derived from international agreements or of the principle of reciprocity. Reciprocity must be proven by the one who invokes it.
- Non-ves inventions, from all technological fields, that involve inventive activity and are susceptible to application are patentable
- The subject of an invention protected by a patent can be a product or a process. The object protected by a patent can also refer to:
a) A product that is composed or that contains biological matter;
b) A procedure through which biological matter is produced, transformed or used;
c) Biological matter isolated from its natural environment or produced through a technical procedure can be the subject of an invention, even if it previously existed in a natural state.
- For the purpose of patent regulations, “biological matter” means matter that contains genetic information that is self-reproducing or reproducible in a biological system.
- The following cases are not considered inventions within the meaning of paragraph 1 of this article, in particular:
a) Discoveries, scientific theories and mathematical methods;
b) Aesthetic creations;
c) Plans, principles and methods to carry out intellectual activities, in terms of gambling or in the field of economic activities, as well as computer programs;
d) Forms of presenting information
- The provisions of section 4 of this article exclude the patentability of the objects or activities referred to in the said section only to the extent that a patent application or a patent refers to any of these objects or activities as such.
They cannot be the subject of a patent:
- Inventions whose commercial exploitation is contrary to public order or good customs, without the exploitation of an invention being considered as such by the mere fact of being prohibited by legislation
- In particular, they are not considered “patentable” under the provisions of paragraph 1 of this article:
a) Cloning procedures of human beings;
b) The procedures for modifying the germinal genetic identity of the human being;
c) The use of human embryos for industrial or commercial purposes;
d) Procedures for modifying the genetic identity of animals that subject them to these sufferings without substantial medical or veterinary utility for people or animals, and the animals resulting from these procedures.
- Plant varieties and animal breeds. However, inventions whose object is plants or animals are patentable if the technical feasibility of the invention is not limited to a plant variety or a finished animal breed.
- The essentially biological procedures for obtaining plants or animals. For this purpose, procedures that consist entirely of natural phenomena such as crossing or selection are considered “essentially biological”. This does not affect the patentability of inventions whose object is a microbiological procedure or any other technical procedure or a product obtained by means of the aforementioned procedures.
- The human body, in the different stages of its constitution and development, as well as the simple discovery of one of its elements, including the sequence or partial sequence of a However, an isolated element of the human body or otherwise obtained by a technical procedure, including the total or partial sequence of a gene, may be considered a patentable invention, even in the event that the structure of the said element is identical to that of a natural element. The industrial application of a total or partial sequence of a gene must appear explicitly in the patent application.
- The methods for the treatment of the human or animal body by means of surgery or therapy and diagnostic methods applied to the human body or This provision does not apply to products, in particular substances or compositions, intended to be used in any of these methods.
- An invention is considered to be new when it does not form part of the state of the art.
- Prior art consists of everything that has been made available to the public by oral or written description, for use or otherwise, before the filing date of the application or, if priority is claimed, before the priority date of the application.
- Also included in the state of the art is the content of any patent application filed in the Principality of Andorra or with effects in the Principality of Andorra, to the extent that this patent application or the subsequent patent con transferred is subsequently published, provided that the deposit date or, if a priority is claimed, the priority date of this request, is prior to the date referred to in paragraph 2 of this article.
- [BOPA 4740] The provisions of sections 2 and 3 of this article do not exclude the patentability of a substance or a composition, included in the state of the art, for the application of any method referred to in the section 6 of article 4, provided that its use for any of these methods is not included in the state of the art.
- The provisions of paragraphs 2 and 3 of this article also do not exclude the patentability of a substance or a composition mentioned in paragraph 4 of this article for any specific use in a method mentioned in paragraph 6 of the article 4, provided that this use is not included in the state of the art.
An invention is considered to involve an inventive step if, in view of the state of the art, it is not obvious to a person skilled in the art. If the state of the art also includes documents referred to in paragraph 3 of article 5, these documents must not be taken into account when deciding whether there has been an inventive activity.
An invention is considered to be capable of industrial application if it can be manufactured or used in any kind of industry, including agriculture.
- A disclosure of the invention that, occurring within the six months prior to the submission of the application to the Patent Office, was a direct or indirect consequence of the facts is not taken into consideration to determine the state of the art next:
a) An obvious abuse in front of the applicant or his cause;
b) Or that the applicant or his agent has exhibited the invention in official or officially recognized exhibitions within the meaning of the Convention relating to international exhibitions, signed in Paris on November 22, 1928 .
- In the case provided for in letter b of the previous section, it is necessary that the applicant, when submitting the application, declare that the invention has actually been exhibited and that, in support of his clarification, provide the certificate corresponding within the term and conditions determined in the Law’s Implementation Regulations (henceforth, “Implementation Regulations”).
Chapter two Right to a patent; mention of the inventor
- The right to a patent belongs to the inventor or the person who brings the case. Joint inventors have the same rights, unless they agree otherwise.
- Any natural or legal person and any company assimilated to a legal person, by virtue of the legislation applicable to it, can apply for an Andorran patent.
- In the event that two or more persons have made an invention independently of each other, the right to a patent for that invention belongs to the person whose application has the earliest filing date or, if claimed a priority, the earliest priority date, provided that such application has been published.
- For the purpose of actions before the Patent Office, the depositor is considered to be legitimate to exercise the right to the patent.
- Notwithstanding the provisions of article 9, when an invention is generated in the Principality of Andorra in execution of an order or an employment contract, the right to the patent for this invention belongs, unless otherwise agreed, to the person who commissioned the work or the employer.
- In the event that the provisions of section 1 of this article are applied relating to an invention generated in the Principality of Andorra in execution of an employment contract, the employee who is the inventor has the right to fair remuneration taking into account his salary, the economic value of the invention and any profit derived from that invention for the employer. If there is no agreement between the parties to establish the aforementioned remuneration, the judicial authority establishes it at the request of one of the parties. The procedure that follows is the abbreviated one.
- Inventions in the generation of which the circumstances established in paragraph 1 of this article do not occur belong to the worker who is the inventor.
- Notwithstanding the provisions of section 3 of this article, when the worker makes an invention in relation to his professional activity in the company and in obtaining it there has been a predominant influence on knowledge acquired within the company or the use of means provided by this company, the entrepreneur has the right to assume ownership of the invention or to reserve a right of use. When the employer assumes ownership of an invention or reserves the right to use it, the worker has the right to a fair financial compensation, fixed in attention to the industrial and commercial importance of the invention and taking into account the value of the means or knowledge provided by the company and the worker’s own contributions. Its amount is set in accordance with what is established in section 2 of this article.
- The worker who generates any of the inventions other than those established in section 3 of this article must inform the employer, by means of a written communication, with the necessary data and reports so that the employer can exercise the rights that correspond to him within the term of three months. Failure to comply with this obligation entails the loss of the rights granted to the worker in this article.
- Both the employer and the worker are obliged to collaborate to the extent possible for the effectiveness of the rights recognized in this article, and must refrain from any action that could result in the detriment of these rights .
- The employer can claim the inventions for which a patent application or other title of exclusive protection is submitted within the year following the termination of the work or service relationship.
- [BOPA 4741] Any early waiver by the worker of the rights recognized in this article is null and void.
- The rules established in article 10 are applicable to officials, employees and workers of the public and parapublic administration and teachers, without prejudice to what is established in the following sections.
- The universities are responsible for the ownership of the inventions made by teachers as a result of their research function in the universities and which belong to the scope of their teaching and research functions. Every invention must be notified immediately to the corresponding university by the teacher who is the inventor. The university, within three months of receiving notification of the invention, must notify the teacher who is the inventor of its interest in the invention. In the event that the university does not express itself within this period, it is understood for all intents and purposes that the university leaves ownership of the invention to the teacher inventor.
- The teacher has, in any case, the right to participate in the profits that the university obtains from the exploitation or transfer of its rights over the inventions. Cor responds to the statutes or internal regulations of the university to determine the modalities and the amount of this participation.
- The university can transfer the ownership of the inventions to the teacher who is the inventor, and in this case a non-exclusive, non-transferable and free exploitation license can be reserved.
- When the teacher obtains profits from the exploitation of an invention mentioned in section 4 of this article, the university is entitled to a share in these profits determined by the statutes or internal regulations of the university.
- When the teacher makes an invention as a result of a contract with a private or public body, the contract must specify to which of the contracting parties the ownership corresponds.
- The regime established in this article is applicable to the inventions of the research staff of public and parapublic research bodies.
- The inventor has, before the holder of the patent application or the patent, the right to be mentioned as an inventor before the Patent Office.
- The application must name the inventor or, if there is more than one, all inventors.
- Every designated inventor must be named as such in the published application and in the patent specifications, unless the inventor requests, in a statement signed by him and addressed to the Patent Office, that he wishes not to be mentioned as such.
Chapter three The application and the procedure until the concession
A patent application can be submitted by several Applicants together.
- The application for a patent must be submitted to the Patent Office and must contain:
a) A request for the granting of a patent;
b) An identification of the applicant;
c) A description of the invention;
d) One or more claims;
e) All drawings mentioned in the description or claims;
f) A summary of the invention.
- The submission of the application is subject to the payment of the filing fees established in the Patent Office Fees Act and must meet the conditions established in the Implementing Regulations.
- La documentació que inclogui el que s’esmenta a l’apartat 1 d’aquest article ha d’estar redactada en català, castellà, francès o anglès i ha de complir els requisits establerts en el Reglament d’execució. Quan aquesta documentació estigui redactada en castellà, francès o anglès, s’ha de presentar una traducció al català de, com a mínim, les reivindicacions.
- The submission of a patent application can be done electronically, according to the provisions of the Executive Regulations and in accordance with the regulations in force regarding electronic trust services.
- The filing date of an application is the date of receipt by the Patent Office of an application that contains, at a minimum, the following elements:
a) A statement for which a patent is requested;
b) The information that identifies the depositor;
c) A description of the invention, or a reference written in Catalan of a previously filed application. The reference to a previously submitted application must indicate the date of submission and its code, as well as the Office in which it was filed. Likewise, the applicant must provide a certified copy of the previous application within two months from the date of submission of the application.
- In order to grant a filing date, the Patent Office takes into account the following special cases:
a) If the Patent Office detects that, at the time of receipt of an application, the requirements referred to in paragraph 1 of this article have not been met, it must require the depositor to comply with the requirements of the form established in the Executive Regulations. If the depositor meets the requirement, the date of deposit of the application is the date of receipt of all missing items. If the depositor does not comply with the requirement, the application must be considered as if it had not been submitted.
b) [BOPA – 4742] If the application refers to drawings that are not attached to the application, the Patent Office must require the applicant to provide the missing drawings. If the depositor meets the requirement, the date of deposit of the application is the date of receipt of the missing drawings. If the depositor fails to comply, the date of deposit is the date of receipt of the application, and any reference to the drawings shall be deemed deleted. However, when the patent application claims the priority of a previous application, and the first one contains drawings that have not been submitted by the applicant, the filing date indicated in the application will be maintained Article 1 of this article, provided that the applicant complies with the requirements established for these purposes in the Executive Regulations.
- When a deposit date has been agreed for the application, the Patent Office informs the depositor accordingly.
- The application must disclose the invention in a sufficiently clear and complete manner that the invention can be carried out by a person skilled in the art.
- If the application relates to biological material that cannot be disclosed in the application in a way that allows the invention to be carried out by a person skilled in the art and this material is not within reach of the public, the request must be completed with a deposit of this material in a recognized deposit institution, in the manner established in the Implementing Regulations.
The claims define the object of the requested protection. They must be clear and concise and must be based on the description.
The summary of the invention is for technical information purposes only. It cannot be taken into account for any other purpose, and in particular it cannot be used neither to determine the scope of the protection requested, nor to determine the state of the art for the purposes of what is provided in section 3 of article 5.
An application must refer to a single invention or a group of inventions related to each other in such a way that they form a single general inventive concept.
- The depositor may submit a divisional application, until such time as the initial application is in order for the grant.
- Every divisional application is entitled to be assigned the filing date and, if priority is claimed, to be assigned the priority date of the initial application, provided that its content does not go beyond the disclosure of the initial application as submitted.
- Priority documents filed with the Patent Office in connection with the initial application shall be deemed filed with respect to any divisional application.
- Who has submitted regularly, or for:
a) A state party to the Paris Union Convention, or
A member state of the World Trade Organization,
an application for an invention patent, a utility model, a utility certificate, or the rights holders thereof, enjoy, to carry out the presentation of an Andorran patent application for the same invention, of a right of priority for a period of twelve months from the date of presentation of the first application.
- Any filing that meets the minimum requirements to obtain an application date under the national law of the state in which it was made gives rise to the right of priority.
- A subsequent application that has the same object as a previous first application submitted in the same State or for same State, on the condition that this previous application has been withdrawn, abandoned or denied on the date of presentation of the subsequent application, without having been subjected to public inspection and without having left pending rights, and that it has not served as basis for claiming the right of priority. The previous application cannot serve as a basis for claiming the right of priority.
- In the event that the first presentation has been made before an Office that is not linked to any of the instruments mentioned in section 1 of this article, sections 2 and 3 of this article only apply as a result of ‘a Government agreement by virtue of reciprocity criteria.
- The applicant who wishes to claim the priority of a previous application must submit, in the form and within the terms established in the Implementing Regulations, a declaration of priority and a copy certified by the Office of origin of the previous request, with the Catalan translation of, at least, the claims, when this request is written in another language.
- Multiple priorities can be claimed for an Andorran patent application even if they come from different states. If applicable, multiple priorities can be claimed for the same claim. If multiple priorities are claimed, the deadlines to be established from the priority date will be counted from the earliest priority date. When one or more priorities are claimed, the priority right only protects the elements of the application that are contained in the application or applications whose priority is claimed.
- When some elements of the invention for which priority is claimed do not appear among the claims formulated in the previous application, so that priority can be granted it is sufficient that from the set of documents of the [BOPA 4743] previous application clearly deduce the existence of these elements.
- The incorrect claim of priority may be corrected at the request of the applicant or ex officio by the Patent Office. In the absence of correction, the incorrect priority claim will be considered void.
By virtue of the exercise of the right of priority, the date of priority is considered to be the filing date of the patent application for the purpose of Article 5, paragraphs 2 and 3, and Article 9, section 3.
- The depositor has the right, on his own initiative, to amend or correct the application until such time as the application has met the requirements for the grant.
- No amendment or correction of the application shall extend beyond the content of the application as it was submitted on the filing date. The applicant can modify the claims in accordance with what is provided in section 1 of this article, without the need for any authorization from those who have rights registered on their application in the Patent Register.
- The depositor may withdraw the application at any time while it is pending, without the right to a refund of the fees paid. When third-party rights are registered in the Patent Register on the application, this application can only be withdrawn with the consent of the holders of these rights.
- The Patent Office shall publish in the Patent Bulletin as soon as possible after the expiration of the period of eighteen months from the date of deposit or, if priority is claimed, from the priority date of the request, and in the manner established in the Implementation Regulations, every request submitted, except in the following cases:
a) No application is published if it is withdrawn or finally denied before the technical preparations for publication have been completed.
b) In the event that, before the expiry of the aforementioned period of eighteen months, the applicant submits a written request to the Patent Office for his application to be published in the Patent Bulletin, the Office de Patents must publish this request as soon as possible after receiving the request.
- Once the patent application has been published, anyone can consult the application file, in accordance with the conditions established in the Implementing Regulations.
- The publication is made exclusively by electronic means.
- The Patent Office shall publish every granted patent as soon as possible after the mention of the grant of registration is published in the Patent Bulletin.
- The Patent Office must publish in the Patent Bulletin the mention of the grant of the registration. Said mention must include the identification of the applicant and the date of submission of the application, in addition to the title and description.
- The Patent Office must publish the patent whenever, with the advance provided for in the Implementing Regulations, the patent holder has completed the formal requirements required to publish the patent.
- If the applicant does not meet the requirements established in the previous section and the registration is not published, it is considered that the patent registration application has never produced the effects provided for in the Law.
- The publication is made exclusively by electronic means.
- If an application has been granted a filing date, the Patent Office must examine whether the application meets the requirements of Articles 12 and 14. The Patent Office is under no obligation to examine whether the application and the invention to which it refers meet the requirements of articles 2 to 8, 16, 17, 19, 20 and 24.2. However, the Patent Office may refuse, after granting a hearing to the interested person, the request that is not new in a manifest and notorious manner.
- If the Patent Office considers that the application does not meet the requirements referred to in paragraph 1 of this article, it must indicate the deficiencies to the depositor and give him the possibility to correct them in accordance with provide the Implementing Regulation. The request must be denied if the depositor does not correct the deficiencies indicated by the Patent Office within the period provided for in the Implementing Regulations.
- If the application meets the requirements referred to in section 1 of this article, the Patent Office grants, with the prior payment of the fees established in the Patent Office Fees Law, a patent on the basis of the request. The Patent Office must register the grant of the patent in the Patent Register and publish the specifics of the patent in accordance with the provisions of the Implementing Regulations.
- If the applicant has submitted a request for early publication of the application, he may request that the patent be granted immediately after publication of the application.
- The granting of the patent is done without prejudice to third parties and without guarantee from the State as to its validity and the usefulness of the object on which it falls.
- From the moment of the grant, the patent deploys all the effects known in the Law and its implementing Regulations.
- Notwithstanding what is provided in section 1 of this article, the request for precautionary measures, as well as the exercise of actions based on a patent, must be accompanied by a principle of proof that the the title in question meets the requirements set out in articles 2 to 8, 16, 17, 19, 20 and 24.2. This principle of [BOPA 4744] proof may consist, among others, of expert reports on the patentability of the invention, or of contractual documents of license agreements granted on the patent.
- In any case, European patents, as well as national ones granted after having passed a substantive examination, are considered proof of principle, when they refer to the same invention, provided that, in the latter case, they have been granted in a procedure in which the patentability requirements referred to in paragraph 2 of this article have been examined. In all infringement proceedings, the claimant must provide, if any, the foreign resolutions related to the patent that is the subject of the proceedings for recognition by the judicial authority.
- The request for precautionary measures, as well as the exercise of actions based on a patent, must be accompanied by a sworn translation into Catalan and, where appropriate, postulated, of the parts of the patent that have not been translated into said language during processing.
- Likewise, the documents mentioned in sections 2 and 3 of article 28 that are not written in Catalan must be accompanied by a sworn translation into Catalan and, where appropriate, postil·lated.
- In the annulment proceedings initiated under Article 57, the costs order must contain an express statement on the translation costs of the patent assumed by the plaintiff.
- The Patent Office maintains a Patent Register in which it registers patent applications and granted patents.
- Matters relating to the patent application or the patent, as well as all corrections, amendments, changes of ownership or other matters that the Patent Office is authorized or required to register in accordance with this Act. No entry is made in the Patent Register before publication of the application.
- Entries in the Register of Patents made in accordance with the provisions of this Law are presumed to be true, unless proven otherwise.
- The Patent Register is public and can be consulted in accordance with the conditions established in the Implementing Regulations.
- Except for the case provided for in article 41, transmission, licenses and any other act, voluntary or necessary, that affects patent applications or patents already granted are only effective against third parties in good faith since they have been registered in the Patent Register.
- Chapter four Effects of a patent
- A patent gives its holder the right to prohibit third parties, in the absence of their consent:
- The manufacture, offering, introduction to the market or use, or the importation or storage for these purposes of the product subject to the patent;
- The use of a process that is the subject of the patent or, when the third party knows or the circumstances make it clear that the use of this process is prohibited without the consent of the patent holder, the offer of this process ;
- The offering, the introduction on the market, the use, or the importation or storage for these purposes of the product directly obtained by a process that is the object of the patent.
- When the patent has for its object a biological matter which, by virtue of the invention, possesses certain properties, the rights conferred by the patent extend to any biological matter obtained from the patented biological matter for reproduction or multiplication, in the form identical or different, and possessing these same properties.
- When the object of the patent is a procedure that allows the production of biological matter that, due to the fact of the invention, possesses certain properties, the rights conferred by the patent extend to the biological matter directly obtained by the patented procedure, and to any other matter biological obtained from the first by reproduction or multiplication, in identical or differentiated form, and possessing these same properties.
- When the object of the patent is a product that contains or consists of genetic information, the rights conferred by the patent extend, without prejudice to the provisions of paragraph 5 of article 4, to all matter to which the product is incorporated and in which the genetic information is contained and performs its function.
- The patent also confers on its owner the right to prohibit a third party, without their consent, from delivering or offering to deliver to a person other than the one authorized to exploit the patented invention, the means of application of the invention related to an essential element of this invention, when the third party knows or the circumstances show that these means are suitable and intended for this application.
- Paragraph 1 of this article is not applicable in the event that the means of application are products that are normally found in commerce, unless the third party incites the person to whom he delivers the means to commit acts prohibited by the article 31.
- Those who carry out the acts referred to in letters b, c, d of paragraph 1 of article 33 are not considered qualified to exploit the invention in the sense of paragraph 1 of this article.
- The rights conferred by a patent do not extend to:
a) Proceedings regarding a product covered by the patent after this [BOPA 4745] product has been introduced to the market by the patent holder, or with his express consent, in the Principality of Andorra or any other territory specified by Government agreement by virtue of reciprocity criteria;
b) Acts carried out privately and with non-commercial purposes;
c) Acts carried out for experimental purposes in relation to the object of the patented invention;
d) Studies and trials, and the consequent practical requirements, which are necessary to obtain a marketing authorization for a medicine in the Principality of Andorra as well as in the market of any country in the world;
e) Acts consisting of the extemporaneous preparation, for individual cases, in a pharmacy or by a doctor or a veterinarian, of a medicine in accordance with a medical prescription, or acts regarding the medicine prepared in this way;
f) The use of the patented invention in any space or aerial widget, or foreign land vehicle, that temporarily or accidentally penetrates the airspace or the territory of the Principality of Andorra, provided that the patented invention is used exclusively ment in the construction or operation of space or aerial craft, or land vehicle;
g) Acts relating to the biological matter obtained by reproduction or multiplication of a protected biological matter subject to the patent, after this matter has been placed on the market in the territory referred to in letter a of this section by the holder of the patent or with its consent, when the reproduction or multiplication is the necessary result of the use for which the mentioned biological material has been commercialized, and on the condition that the material obtained is not subsequently used for new reproductions or multiplications
- The holder of a patent cannot invoke it to defend himself against the actions directed against him for violation of other patents that have a priority date earlier than his The fact that the invention object of a patent cannot be exploited without using the invention protected by a previous patent belonging to a different holder is not an obstacle to the validity of that patent. In this case, neither the holder of the earlier patent can exploit the later patent during the term of that patent without the consent of its holder, nor the holder of the later patent can exploit either patent during the term of the patent above, unless it has the consent of the holder of this patent.
- Notwithstanding the provisions of the previous articles, the sale or any other form of commercialization of plant reproductive material carried out by the patent holder or with his consent to a farmer for his agricultural exploitation, implies the latter’s right to use the product of his harvest for a further reproduction or multiplication carried out by himself in his exploitation.
- Notwithstanding the provisions of the previous articles, the sale or any other form of commercialization of breeding animals or animal reproduction material carried out by the patent holder or with his consent to a farmer or rancher, implies the authorization to the latter to use the protected livestock for agricultural or livestock purposes. This includes the provision of livestock or other animal reproduction material so that the farmer or rancher can continue his agricultural or livestock activity, but not the sale as part of or with a commercial reproduction activity purpose
- Any person who, in good faith, for the purposes of his firm or business, before the date of deposit or, if priority is claimed, before the priority date of the application on which the patent is granted , and within the Principality of Andorra, uses the invention or makes effective and serious preparations for such use, has the right, for the purposes of his company or business, to continue such use or to use the invention as had planned in those preparations.
- The previous user’s right may only be transferred or transmitted together with your company or business, or with the part of your company or business in which the use or preparations for the use
From the date of its publication, the patent application grants its holder provisional protection consisting of the right to demand compensation, reasonable and appropriate to the circumstances, from any person who, between that date and the of publication of the mention in which the patent has been granted, has carried out a use of the invention that after this period is prohibited by virtue of the patent. This same provisional protection is applicable even before the publication of the application before the person who has been notified of the submission and the contents of this submission. When the object of the patent application is constituted by a procedure relating to a microorganism, provisional protection begins only after the microorganism has been made accessible to the public. The patent application is deemed never to have had these effects if it is withdrawn or ultimately denied.
The duration of a patent is twenty years from the date of deposit of the application.
- The extent of the protection conferred by the patent is determined by the claims, which must be interpreted taking into account the description and drawings, so as to combine a fair protection for the patent holder with a reasonable degree of certainty for third parties.
- In order to determine the extent of the protection and in accordance with the Implementing Regulation, the elements that at the time in [BOPA 4746] that any violation is alleged must be taken into account are equivalent to the elements expressed in the claims.
- During the period leading up to the grant of the patent, the extent of protection conferred by the patent application is determined by the published claims. However, the patent, as it has been granted or amended in a procedure of principle of proof according to article 28, or of nullity according to article 57, retroactively determines the protection conferred by the patent application , to the extent that this protection is not extended.
Chapter five. Joint ownership and change in ownership of patent application or patent
- Patent application and patents constitute a property right.
- Both the patent application and the patent are transferable by all means recognized in law and may be the subject of licenses and usufruct. They can also be given as a guarantee through the constitution of a movable mortgage.
- Every contract of assignment of a patent application or a patent must be in writing. Otherwise it is invalid. The previous specificity does not govern for intestate succession.
- Any change in the ownership of a patent application or a patent must be registered in the Patent Registry with the prior payment of the fee established in the Patent Office Fees Act. The new holder of the application or patent has the right to bring legal action in respect of the application or patent only if it has been entered in the Patent Register.
- The transfer or assignment of a patent application or patent does not affect rights acquired by bona fide third parties prior to the date of such transfer or assignment, and is effective with respect to bona fide third parties only after registration in the Patent Register. For this purpose, any voluntary or necessary act affecting patent applications or already granted patents is equated with assignment.
- Every modification of the rights of a patent includes that of its additions, which, by themselves, cannot be the object of transmission.
- If a patent application has been submitted by a person who is not entitled to a patent under Articles 9, 10 or 11, or a patent has been granted to a person who is not entitled to a patent under Articles 9, 10 or 11, the person entitled to it according to said articles may request, within the two years following the publication of the grant, the judicial authority to order the transfer in his favor of the patent application or of the patent. This term is not applicable if the holder, at the time of the grant or acquisition of the patent, is aware that he was not entitled to the same patent.
- When a person is only entitled to a part of the patent, he can request that he be attributed co-ownership of this patent in accordance with paragraph 1 of this article.
- When, in accordance with the provisions of paragraph 1 of this article, a final judgment has recognized the right to obtain the patent to a person other than the applicant, and provided that the patent has not yet been granted , this person may, in accordance with the Enforcement Regulation and within a period of three months from the judgment having acquired the force of res judicata:
a) Continue the procedure related to the request, subrogating in the place of the applicant;
b) Submit a new patent application for the same invention, which enjoys the same priority; or
c) Request that the request be denied.
- Having submitted a legal claim aimed at achieving the judgment referred to in paragraph 1 of this article, a patent application cannot be withdrawn without the consent of the claimant. The judicial authority must agree to the suspension of the concession procedure, once the request has been published, until the final judgment is notified if the actor’s claim is dismissed, or up to three months after said notification if, on the contrary, it is estimated.
- The presentation of a legal claim urged by an interested party, for the exercise of the actions mentioned in this article, as well as the judgment fer ma or any other form of termination of the procedure initiated by virtue of said claim, must be object of annotation in the Patent Register for advertising purposes to third parties.
- When there is a change in the ownership of a patent as a result of a judgment of those foreseen in the previous article, the licenses and other rights of third parties on the patent are extinguished by the registration in the Register of Patents of the authorized person.
- Both the holder of the patent and the holder of a license obtained before the registration of the presentation of the judicial claim who, prior to this same registration, have exploited the invention or have made effective and real preparations for this purpose, may continue or begin exploitation as long as they apply for a non-exclusive license to the new owner registered in the Patent Register, within two months if it is the previous owner of the patent or, in the case of the owner of the licence, within four months of receiving the notification from the Patent Registry informing him of the registration of the new holder. The license must be granted for an appropriate period and under reasonable conditions.
- What is provided in section 2 of this article does not apply when the holder of the patent or license has acted in bad faith at the time that the exploitation of the patent or the preparations for in the same holding.
- For the purpose of its assignment or encumbrance, the patent application or the patent already granted are indivisible, although [BOPA 4747] they may belong in common to several persons.
- In the event that there are joint depositors of a patent application, each of them, without the agreement of the others, may assign or transmit separately by succession his part of the application, but the joint depositors they may only jointly withdraw the application or enter into license agreements with third parties with respect to the application.
- In the event that there are joint owners of a patent, each of them, without the agreement of the others, may separately:
a) Assign or transmit by succession your part of the patent;
b) Urge legal actions in defense of the patent and notify the other owners of the company action, so that they can be added to the action;
c) Exploit the invention after notifying the other owners;
d) Carry out the necessary acts for the preservation of the application or the patent.
- The joint owners can only jointly renounce the patent or conclude license agreements with third parties regarding the patent unless, in the latter case, the judicial authority, for reasons of equity and given the circumstances of the case, authorizes one of the them to grant the indicated concession.
- The provisions of this article are applicable unless otherwise agreed by the depositors or joint owners.
- What is not regulated by this article will be governed, in the absence of an agreement between the parties, by the legal regime of co-ownership
Any patent application or granted patent may be expropriated for reasons of public utility or social interest, by way of just compensation. In these cases, the general regime of forced expropriation will apply mutatis mutandis.
- Unless otherwise agreed, whoever transmits a patent application or a patent or grants a license on these patent applications or patents, is obliged to make available to the acquirer or the licensee the technical knowledge it possesses and that are necessary to be able to proceed with an adequate exploitation of the invention.
- The acquirer or licensee to whom secret knowledge is communicated is obliged to take the necessary measures to prevent its disclosure.
- Whoever transmits a patent application or a patent already granted and grants a license on these patent applications or patents already granted is responsible, unless otherwise agreed, if it is later declared that he did not have the ownership or the powers necessary to carry out the business in question.
- The transferor or licensor is liable whenever he has acted in bad faith. Bad faith is presumed, unless there is proof to the contrary, when he has not informed the other contracting party, and has stated in the contract with individualized mention of the documents, reports or resolutions, Andorran or foreign, that he has or whose existence is known to him, referring to the patentability of the invention that is the subject of the application or the patent.
- The actions for the responsibilities mentioned in sections 3 and 4 of this article are time-barred after six months, counted from the date of the final resolution or the final judgment that serves as their basis.
- Whoever transmits a patent application or a patent already granted or grants a license on these patent applications or patents already granted is liable, jointly and severally with the acquirer or the licensee, for the necessary compensations, as as a result of damages caused to third parties due to defects inherent in the invention that is the subject of the application or patent.
- The transferor or licensor who has had to deal with the responsibility mentioned in section 6 of this article can claim from the buyer or licensee the amounts paid, unless otherwise agreed, which has proceeded in bad faith faith or that, taking into account the circumstances of the case and for reasons of equity, he should be the one to bear all or part of the compensation established in favor of third parties.
- For the purpose of the Law, “license contract” means any contract by which one party, the licensor, grants another party, the licensee, the right to perform any of the acts referred to in articles 31 and 32 with respect to ‘an invention that is the subject of a patent or a patent application.
- All license agreements must be in writing. Otherwise it is invalid.
- A license can be exclusive or non-exclusive. It is understood, unless otherwise agreed, that the license is non-exclusive.
- A license can be total or partial. It is understood, unless otherwise agreed, that the license is total.
- A license can be entered in the Patent Registry in accordance with the form and documentation provided for in the Executive Regulations and with the prior payment of the fee established in the Law on Fees of the Patent Office. Section 3 of article 39 is applicable mutatis mutandis to the granting or transfer of a license.
- All the rights conferred by the patent or by the application may be exercised against an Aryan licensee who violates any of the limits of his license established by virtue of what is provided in the previous sections of this article.
- Unless the contrary has been agreed in writing with the person who granted the license, the holders of the contractual licenses may not assign them to third parties, either in whole or in part, or grant sub-licences to the main one (sub-licenses).
- Unless otherwise agreed, the Aryan licensee is authorized to carry out, with respect to the invention, any of the acts referred to in articles 31 and 32 during the entire duration of the patent, and for any application of the invention, within the territory of Principate of Andorra.
- Unless otherwise agreed, the Aryan licensee cannot authorize a third party to carry out, in relation to the invention, any of the acts referred to in articles 31 and 32.
- Unless otherwise agreed, the licensor may grant a third party the right to perform, with respect to the invention, any of the acts referred to in articles 31 and 32 and has the power to perform them himself.
- Notwithstanding the provisions of paragraph 1 of this article, if the license agreement establishes that the license is exclusive, and unless expressly agreed otherwise, the licensor may not, with respect to the invention, grant to a third party the right to perform the acts referred to in articles 31 and 32 covered by the aforementioned contract, nor perform them himself.
Chapter seven. Actions against the infringement of the rights of the holder of a patent; procedural rules
- Any injury to the rights of the holder of a patent generates the civil and/or criminal liability of its author.
- The holder of a patent may exercise before the judicial authority the corresponding civil and/or criminal actions against any person who infringes his right; in particular:
a) Stopping acts that violate your right;
b) Compensation for damages and judgments suffered;
c) The seizure of the objects produced or imported in violation of their right and of the means mainly intended for the production or the carrying out of the patented procedure;
d) The ownership attribution of the objects or means seized by virtue of what is provided in letter c of this section when possible, in which case the value of the affected goods is imputed to the amount of the compensation of damages. If the aforementioned value exceeds the amount of the compensation granted, the patent holder must compensate the other party for the excess;
e) The adoption of the necessary measures to prevent the infringement of the patent from continuing and, in particular, the transformation of the seized objects or means, or their destruction when this is indispensable to prevent the infringement of the patent;
f) The publication of the conviction of the patent infringer, at the expense of the convicted person, through advertisements and notifications to the interested parties. This measure is only applicable when the sentence expressly states so.
- In the event that a license has been granted, this article applies in accordance with the following specificities:
a) Unless a license agreement establishes the contrary, any licensee may require the patent holder to initiate the relevant actions before the judicial authority against third parties that infringe the rights of the patent holder, who must ‘specify the compensation you claim;
b) This Aryan licensee, if he demonstrates that the patent holder refused or stopped complying with his request within a period of two months from the date of receipt of said request, may initiate said actions on behalf own, after notifying the patent holder of its intention. The patent holder has the right to participate in the lawsuit;
c) If, before the expiration of the term referred to in letter b of this section, the licensee shows that immediate action is necessary to avoid serious damage, he can immediately request the actions provided for in said letter;
d) Every Aryan licensee has the right to participate in the lawsuit filed by the patent holder to ensure adequate compensation for any damage suffered by him as a result of the injury, without prejudice to the actions that this Aryan licensee may directly instigate.
- Civil actions arising from the infringement of the holder’s rights must be brought within a period of five years from the date on which the holder or, if applicable, the Aryan licensee, became aware of the violation and of the identity of the alleged offender.
- Actions in respect of a patent application can only be brought after a patent has been granted on the basis of that application.
- In the event that the object of the patent is a process for obtaining a new product, when this product has been produced by any third party, it is presumed, in the absence of proof to the contrary, that it has been obtained by means of the patented process. In the event that in the framework of a judicial procedure it is proposed to practice a test in the opposite direction, the judicial authority, after the declaration of relevance, practices it with the caution required by the protection of the legitimate interests of that third party in the protection of its industrial and commercial secrets.
- The judicial authority shall order the unsuccessful party to pay the prevailing party’s court costs, including attorney’s and solicitor’s fees, unless it considers the matter doubtful.
- The measures included in the letters cie of section 2 of this article are executed at the expense of the offender, unless well-founded reasons are alleged for this not to be the case.
- The measures provided for in the letters aie of section 2 of this article can also be requested, when they are appropriate, against the intermediaries whose services are used by a third party to infringe patent rights, even if the acts of said intermediaries do not in themselves constitute an infringement, without prejudice to what is provided in other regulations. The aforementioned measures must be objective, proportionate and non-discriminatory.
- [BOPA 4749] The holder of the patent cannot exercise the actions established in this chapter against those who exploit the objects that have been introduced into commerce by persons who have adequately compensated them for the damages caused.
Article 49 Counterclaim or exception to the action for the violation of the rights derived from a patent
- The person against whom an action is brought for violation of the rights derived from a patent can allege, in all types of proceedings, by way of counterclaim or by way of exception, the total nullity or partial of the actor’s patent, in accordance with the rules of procedural law in force at any given time. For these purposes, the provisions of article 57 are taken into account.
- The compensation for damages owed to the patent holder or, where appropriate, to the licensee includes, not only the value of the loss suffered, but also the value of the profit that the holder has ceased to obtain due to the violation of your right. The indemnifiable amount may include, where applicable, the investigative costs incurred to obtain reasonable evidence of the commission of the offense that is the subject of the legal proceedings.
- To determine compensation for damages, the following are taken into account, at the choice of the injured party:
a) The negative economic consequences, among which are the benefits that the holder would have obtained predictably from the exploitation of the patented invention if the infringer’s competition had not existed and the benefits that the latter would have obtained from the exploitation of the patented invention. In the case of moral damage, compensation is appropriate, even if the existence of economic damage has not been proven;
b) The price that the infringer would have had to pay to the patent holder for the granting of a license that would have allowed him to carry out his exploitation in accordance with the law. To set it, particular consideration is given, among other factors, to the economic importance of the patented invention, the duration of the patent at the time the infringement began and the number and class of licenses granted at that time .
- When the injured party chooses, to determine the lost profit, one of the criteria stated in letters a and b of section 2 of this article, they can be included in the calculation of the benefits, in the proportion that the judicial authority reasonable estimate, those produced by the exploitation of the things of which the invented object constitutes an essential part from a commercial point of view. It is understood that the invented object constitutes an essential part of a good from a commercial point of view when the consideration of the incorporated invention is a determining factor for the demand for the said good.
- The patent holder can also demand compensation for the damage that involves the disrepute of the patented invention caused by the infringer through a defective production or an inadequate presentation of this invention on the market.
- From the compensation due by those who have produced or imported the invented object without the consent of the patent holder, the compensations that this holder would have received for the same concept from those who have exploited the same object in any other way are deducted.
- In order to determine the amount of damages suffered by the unauthorized exploitation of the invention, the patent holder may demand the exhibition of the documents of the person in charge that may be used for this purpose.
- Compensation for damages can only be claimed for events that took place within five years prior to the date on which the corresponding action is taken.
- All persons who, without having the consent of the patent holder and/or the licensee to whom the license allows him to grant it, carry out any act of exploitation of the object protected by the patent, are only obliged to compensate for the damages and losses they have caused if they have been warned by the patent holder or their licensee regarding the existence of this patent, duly identified, and of its violation, with the requirement that they cease it, or if his action has involved fault or negligence.
- The judicial authority can order, as a precautionary measure, at the request of those who can exercise them according to the Law, those actions that properly ensure the complete effectiveness of any failure that may occur, and in particular the following:
a) The cessation of any unauthorized use of the patented invention and any intention to use the patented invention;
b) Order the establishment of guarantees intended to ensure, where applicable, the compensation of said holder or of the Aryan licensee;
c) Order that measures be taken to preserve relevant evidence regarding the alleged violation.
- The request for precautionary measures, established in paragraph 1 of this article, will only be accepted if the underlying action has the appearance of good law and if there is a well-founded risk that damages may occur resulting from the use of ‘a patent during the time necessary to obtain a judicial resolution. The judicial authority may subordinate other precautionary measures to the securing of the constitution, by those who request them, of guarantees intended to ensure eventual compensation for the damage suffered by the affected person in the event that it is subsequently considered that the action is without foundation.
- The judicial authority may order the measures established in paragraph 1 of this article without hearing the other party, particularly when any delay could probably cause irreparable damage to the injured party, or when a risk can be demonstrated that the evidence they are being destroyed.
- If, according to paragraph 3 of this article, a precautionary measure has been ordered without hearing the party, he must be notified of this decision without delay. In any case, the party affected by the precautionary measure can oppose it and the judicial authority must decide, [BOPA 4750] without the need for any other procedure, if the measure is confirmed, modified or revoked. This decision, if it is the court that has dictated it, is appealable.
- If the holder or, as the case may be, the Aryan licensee, does not exercise the main action within the period of twenty working days or thirty-one calendar days – whichever expires later – from the date on which the holder or, if applicable, the Aryan licensee received notification of the precautionary measure, or within another period determined by the judicial authority that agreed to the measure, the precautionary measure is without effect, without prejudice to the compensation for damages that can be claimed by the party affected by the precautionary measure.
- If an injunction is revoked or ceases to have effect, or if it is subsequently discovered that there is no actual infringement or risk of infringement of the patent, the judicial authority may, at the request of the party affected by the injunction , that whoever requested the said precautionary measure indemnifies the affected party for the damages caused, including the attorney’s and solicitor’s fees.
- If a precautionary measure has been agreed before the presentation of the principle of proof established in article 28, and a procedure has been initiated in accordance with article 48, this procedure must be suspended until it is available ‘this principle of proof. In this case, the judicial authority may:
a) Agree that the precautionary measures be lifted, a decision subject to the provision of guarantees by the defendant in order to ensure the compensation of the principal for any damage caused as a result of the defendant’s infringing activities; or
b) Agree that the precautionary measures remain in force, a decision subject to the provision of guarantees by the principal in order to ensure the compensation of the defendant for any damage suffered if the action is ultimately considered unfounded. This decision can only be made if the claimant shows that the principle of proof is being processed diligently.
- If the judicial authority agrees to an order in accordance with the provisions of paragraph 7 of this article, after hearing the defendant, the judicial authority sets a deadline during which the principle of proof must be presented and s ‘must follow the procedure. If this principle of proof is not presented within this fixed term, the judicial authority must cancel the precautionary measures.
- Subject to the conditions of any precautionary measure established in this article, the patent holder, or if this is the case, the Aryan licensee, has the right to proceed in any place, by the judicial authority, assisted by experts of their choice, either in the detailed description with or without sampling, or in the actual seizure of the goods that they consider to be in violation of their rights.
- Without prejudice to what is established in the previous article, the holder of a patent, or in its case its licensee, has the right to request the competent body in customs matters to retain goods when it suspects that these may infringe their patent rights.
- The intervention request referred to in paragraph 1 of this article will be carried out in accordance with the procedure provided for in articles 82 to 91 of the Customs Code Law of June 20, 1996, for counterfeit goods and pirated goods. These provisions will apply mutatis mutandis to the cases of goods that may violate patent rights. In the event that the aforementioned provisions are replaced by others, requests for intervention will be carried out in accordance with what is established by the customs legislation in force at any given time.
- During an intervention procedure, the declarant of the goods can issue a written declaration that includes the destruction of them. In the event that there is no such consent from the declarant of the goods, the right holder, or in his case the Aryan licensee, must initiate the corresponding civil and/or criminal procedure to be able to assert his right .
- Any interested person may request the judicial authority, through proceedings against the patent holder, to declare that the execution of a specific act does not constitute a violation of the rights established in articles 31 or 32.
- The interested person, prior to the filing of the claim, must notarially require the patent holder to rule on the opposition between this patent and the industrial exploitation that the claimant carries out on Andorran territory or in front of the serious and effective preparations that he develops for these purposes. After three months have passed from the date of the request without the patent holder having spoken or when the requester is not satisfied with the response, he can exercise the action established in paragraph 1 of this article.
- The validity of the patent cannot be called into question during this procedure.
- This action cannot be taken while the act in question is the subject of a procedure for infringement of the right of the holder of a patent against the person mentioned.
- The action mentioned in paragraph 1 of this article cannot be exercised by anyone who has been sued for the violation of the patent in question.
- The demand must be notified to all persons holding rights to the patent who are duly registered in the Patent Register, so that they can appear in person and intervene in the process. However, contractual licensees may not impersonate themselves, when so provided in their license agreement.
- The holder of a patent can ask the Patent Office to make changes to the patent in order to limit the extent of the protection conferred on it.
- A patentee may ask the Patent Office to make changes to the patent in order to correct typographical or other errors made in good faith.
- The holder of a patent may ask the Patent Office to modify the [BOPA 4751] name or address of the patent holder entered in the Patent Register, provided that this modification does not involve a change of person or personality legal status of the holder.
- None of these changes to the patent may extend beyond the content of the application as filed on the date of filing.
- If the Patent Office accepts the changes related to the patent requested in accordance with sections 1 to 4 of this article, and to the extent that it does so, it must enter the changes in the Patent Register and publish them.
- The holder may waive the entire patent, one or more claims of the patent or a part of one or more claims.
- When the renunciation is partial, the patent remains in force with reference to the claims not included in the renunciation, provided that they can constitute the subject of an independent patent and that the renunciation does not involve the expansion of the subject of the patent beyond the content of the patent application, as it was filed.
- The waiver must be notified in writing to the Patent Registry and is deemed to have taken place at the time of its registration in the Patent Registry.
- Once they are registered in the Patent Register, the Patent Office must publish in the Patents Bulletin all renunciations, as well as any modification suffered by a patent as a result of a partial renunciation.
- Renunciation by the owner of a patent over which there are real rights or licenses registered in the Patent Register cannot be accepted without the consent of the owners of the registered rights.
- Neither can the waiver of a patent whose ownership has been claimed by a third party be admitted without the consent of this third party.
A patent expires:
- At the end of the term established in article 37.
- If the patent holder waives it, on the date on which this waiver is effective.
- If a maintenance fee and any surcharge have not been paid on time, on the due date of the maintenance fee.
- Any person can request before the judicial authority a procedure for the declaration of nullity of a patent, in whole or in part, but only for one of the following reasons:
a) The object of the patent is not patentable according to articles 3 to 7;
b) The patent does not disclose the invention in a sufficiently clear and complete manner for it to be carried out by an expert in the field;
c) The subject matter of the patent extends beyond the content of the application as filed or, if the patent was granted in a divisional application, the content of the initial application as he introduced himself;
d) The holder of the patent is not entitled to it, according to articles 9, 10 or 11. This reason can only be invoked by a person who alleges that he is entitled to the patent.
- The declaration of nullity of a contract can be requested throughout its legal life and even within five years after its termination, according to article 56.
- If the grounds for invalidity only affect the patent in part, the judicial authority must declare a partial invalidity that adequately limits the extension of the patent.
- The declaration of invalidity implies that the patent was never valid and it is considered that neither the patent nor the application that originated it never had the effects provided for in this Law.
- Without prejudice to the compensation for damages that would have accrued if the patent holder had acted in bad faith, the retroactive effect of the nullity does not affect:
a) The resolutions on infringement of the patent that had acquired the force of res judicata and had been executed prior to the declaration of nullity;
b) Contracts concluded before the declaration of nullity, to the extent that they had been executed previously. However, for reasons of fairness and to the extent that the circumstances justify it, it is possible to claim the restitution of sums paid under the contract.
- Once it is final, the declaration of invalidity of the patent has the force of res judicata before everyone.
From the moment an agreement for the validation of European patents between the Principality of Andorra and the European Patent Organization enters into force, a European patent application and a European patent validated in the Principality of Andorra will produce the effects of a national patent application and a national patent in accordance with the Law, without prejudice to the provisions for the execution of the content of the validation agreement.
Chapter Ten. International applications under the Patent Cooperation Treaty
- Whenever a reference is made in this Act to the Patent Cooperation Treaty, done at Washington on June 19, 1970 , this reference includes the Regulations of the Patent Cooperation Treaty and the administrative instructions under the Cooperation Treaty in the matter of patents.
- The Patent Office must process international applications in accordance with the provisions of the Patent Cooperation Treaty made in Washington on June 19, 1970 and of this Law, and of all other applicable regulations. In the event of a conflict between the provisions [BOPA 4752] of the Patent Cooperation Treaty and the provisions of this Act and any applicable legislation, the provisions of the Patent Cooperation Treaty shall prevail.
- Further details of the processing of international applications and other functions of the Patent Office in relation to the Patent Cooperation Treaty, done at Washington on June 19, 1970 , including deadlines and other requirements in relation to international applications. The Patent Office Fees Act sets out the fees to be paid in relation to international applications.
- The Patent Office acts, in accordance with what is established in section 3 of this article, as a receiving office with respect to an international application submitted by a resident or a national of the Principality of Andorra.
- An international application submitted to the Patent Office as the receiving office must be submitted in Catalan with a translation into a language accepted by the administration that is competent to conduct the international search and, where applicable, the examination international preliminary of this application. The transmission fees set out in the Patent Office Fees Act must be paid to the Patent Office. All of the above is regulated in the manner established in the Executive Regulations.
- The Government may establish an agreement of the type referred to in rule 19.1.b of the Regulations of the Patent Cooperation Treaty by which an intergovernmental organization or the national office of another contracting state of the Patent Cooperation Treaty acts instead of the Patent Office as receiving office for depositors who are residents or nationals of the Principality of Andorra.
- Without prejudice to what is established in section 2 of this article, the Patent Office acts as designated or elected office in relation to any international application designated or elected by the Principality of Andorra.
- When a European patent validation agreement between the Principality of Andorra and the European Patent Organization enters into force, any international application by which the Principality of Andorra is designated or elected for the grant of a patent in accordance with the provisions of the Patent Cooperation Treaty, made in Washington on June 19, 1970 , will be considered as a request for the validation of a European patent in the Principality of Andorra, and the Office The European Patent Office will act as an office designated or elected under the Patent Cooperation Treaty.
- The Patent Office as a designated or elected office does not initiate the processing of an international application designated or elected by the Principality of Andorra before the expiration of the term referred to in article 64.1, unless the depositor complies the requirements of that article and present to the Patent Office an express request for the early start of this processing.
- When the Patent Office acts as a designated or elected office, the depositor must, before the expiration of the applicable period under Articles 22 or 39 of the Patent Cooperation Treaty, done at Washington on June 19 of 1970 or the later term that may be prescribed in the Implementing Regulations, the filing fee established in the Patent Office Fees Act and, if requested, must submit a translation according to the deadlines established in the Regulations of execution
- For the purpose of paragraph 3 of article 5, any international application that designates the Principality of Andorra, for the purpose of obtaining a national patent, is only taken into account if the filing fee and, if requested, the corresponding translation has been submitted.
- If the filing fee has not been duly paid or the translation has not been filed within the applicable deadline under paragraph 1 of this article, the international application shall be considered withdrawn.
- The applicant must have the opportunity to amend the claims, the description and the drawings submitted to the designated or elected office within the period established by the Implementing Regulation. The designated or elected office shall not grant or refuse to grant a patent before the expiration of this term, except with the express consent of the applicant.
- Where the designated or elected office requires a translation of the international application, the amendments must be submitted in the language of the translation.
- to carry out the international research report and, if applicable, the international preliminary examination
- The European Patent Office will be the administration in charge of carrying out the international search report and, if requested, the international preliminary examination of international applications submitted to the Principality of Andorra as receiving office.
- Chapter eleven Common provisions
- The applicant or the holder of a patent in Andorra who, despite having shown all the diligence required by the circumstances, has not been able to meet a deadline before the Patent Office, his rights are restored, after making the request, in the event that non-compliance has resulted, as a direct consequence under the provisions of the [BOPA 4753] law or its implementing Regulations, in the rejection of the Andorran patent application, the consideration of having the Andorran patent application withdrawn, the Andorran patent annulment of the Andorran patent or the loss of any other right or means of recourse.
- The request must be submitted in writing within a period of two months from the disappearance of the causes that have given rise to the non-observance of the deadline. The acts that have not been carried out must be done within this period. The petition is only admissible within a period of one year from the expiry of the unobserved period. In the case of non-payment of an annual fee, the periods provided for paying with a surcharge are deducted from the period of one year.
- The request must be motivated and must indicate the facts and reasoning invoked to support it. It is only considered submitted if the rights restoration fee has been paid.
- Anyone who, during the period between the loss of a right of those referred to in paragraph 1 of this article and the publication of the notice of the restoration of said right, has in good faith begun to exploit or make serious and effective preparations to exploit the invention which is the subject of a published patent application, or of a patent, may continue, free of charge, such exploitation within his company or for the needs of his company.
- The rules contained in this article apply, mutatis mutandis, to the fulfillment of the procedures and the payment of the international application fees referred to in the previous chapter.
Any person directly affected by a decision of the Patent Office may file an appeal against the decision, in accordance with the provisions of current legislation.
- Without prejudice to the provisions of chapter eight, the civil or, where applicable, criminal judicial authority has exclusive jurisdiction over any litigation between individuals in relation to a patent application or a patent, in particular with regard to :
a) Any demand for precautionary measures or practice of preliminary proceedings;
b) Any action for infringement or a clarification of non-infringement of a patent or a patent application;
c) All actions for the declaration of invalidity of a patent;
d) Any action on the right to the patent, on the ownership or transfer of a patent application or a patent, or on a license contract.
- All civil litigations that may arise from the provisions of this Law are handled by the abbreviated procedure.
- Natural or legal persons who do not have their residence or registered office in the Principality of Andorra must be represented by a patent agent and act through this agent in all proceedings before the Patent Office, except for exceptions established for certain actions in accordance with the Executive Regulations.
- Natural or legal persons with residence or registered office in Andorra may be represented, in proceedings before the Patent Office, by an employee or other representative who does not necessarily have to be a patent agent.
- Every representative must be authorized in accordance with the provisions of the Implementing Regulations.
- Only natural persons registered in the Register of Patent Agents kept by the Patent Office can act as patent agents.
- You can register in the Register of Patent Agents:
a) Who has an official university qualification recognized in the Principality of Andorra, has Andorran nationality or permanent and effective residence in the Principality of Andorra, and has completed the course and passed the examination convened by the Patent Office.
b) Who is an authorized representative in the Principality of Andorra, has Andorran nationality or permanent and effective residence in the Principality of Andorra, and has completed the course and passed the examination convened by the Patent Office.
- Every administrative or judicial summons to a depositor or a holder of a patent represented before the Patent Office by a patent agent in compliance with paragraph 1 of article 71, is sent to the address of this agent of patents This subpoena is understood, for all purposes, to have been received by the depositor or the holder, within the period established by the administrative or judicial authority, which in no case can be made with a notice period of less than thirty calendar days of the date of receipt by the patent agent.
- Chapter twelve. Patent Office Fees
The fees that are required for the registration and maintenance of a patent, as well as for any other registration established in the Law, and for any service that the Patent Office may perform, as established in the Implementing Regulations, are fixed by law.
With the entry into force of the Law repealing all rules of equal or lower rank that oppose it and, in particular, the Patent Law of June 10, 1999 , as well as article 53 of Law 35/2008, of December 18 , of the Labor Relations Code.
The Government is empowered to approve the development rules and agreements or instruments necessary to carry out the validation of European patents [BOPA 4754] in the Principality of Andorra, as well as any eventual accession of the Principality of Andorra to the Cooperation Treaty in matter of patents, done in Washington on June 19, 1970 and the Convention on the grant of European patents, done in Munich on October 5, 1973 .
The Government is empowered to approve the necessary regulatory provisions required by the development of the Law.
- All legal or regulatory references made to the Trademarks Office or the Patents Office must be understood as made to the Trademarks and Patents Office of the Principality of Andorra (OMPA) .
- Any mention made in the regulations in force to the director of the Trademarks Office, the Patents Office or the Trademarks and Patents Office of the Principality of Andorra (OMPA) must be understood as made in the ‘authority that is in charge before the latter.
- The Law will enter into force one month after it is published in the Official Gazette of the Principality of Andorra, except for chapter nine, which will enter into force on the date that the European patent validation agreement between Andorra and the European Patent Organization, and of the tenth chapter, which will do so when the Patent Cooperation Treaty, made in Washington on June 19, 1970, enters into force in the Principality of Andorra.
Casa de la Vall, October 30, 2014
Vicenç Mateu Zamora
We the co-princes sanction and promulgate it and order its publication in the Official Gazette of the Principality of Andorra.
Joan Enric Vives Sicily
Given that the General Council in its session on October 30, 2014 approved the following:
law 27/2014, of October 30 , on fees of the Patent Office
This Law implements Article 73 of the Patent Law, which establishes that the fees required for the registration and maintenance of a patent, as well as for any other registration established in the Patent Law, and for any other service that the Patent Office may perform, as established in the Regulations for the Implementation of the Patent Law, must be fixed by law.
The fees referred to in article 73 of the Patents Law are created, which are governed by this Law and, if applicable, by the regulatory provisions that implement it.
The Patent Office is responsible for the management and collection of the fees regulated in this Law.
The registration and maintenance of a patent, as well as the other registrations relating to a patent, and the other services carried out by the Patent Office referred to in this Law constitute events generating the fees regulated in this Law.
The person obliged to pay the fee is the natural or legal person, national or foreign, who requests one or more registrations or services constituting a generating event.
- The fee is accrued at the time of requesting registration or the constitutive service of a generating event.
- In any case, the registration or the corresponding service is not provided until the fee is received by the Patent Office.
- Failure to pay the fee within the corresponding period deprives the act for which this fee should have been paid of all effectiveness.
- When a fee established to process a patent application file is no longer paid, it is understood that the application has been withdrawn.
- To keep the patent in force, its holder must pay the maintenance fees or annuities listed in this Law.
- Annuities must be paid in advanced years throughout the term of the patent. The due date of each annuity is the last day of the month of the anniversary of the filing date of the patent application.
- The payment of the annuities must be made within the three months before the due date of each annuity or the month after the said date. If the amount is not satisfied within this period, the same can be paid with a surcharge of 25 per cent within the first three months from the month following the due date of the corresponding annuity and 50 per 100 within the three months following the aforementioned first three months, up to a maximum of six months of delay. However, in the six months following the referred maximum six months of delay, and up to a maximum time that coincides with the anniversary date of the following annuity, the interested party can regularize the payment of the unpaid annuity, paying a fee equivalent to the amount of the twentieth annuity.
- The fee that must be paid at the time of filing the patent application exempts the payment of the first two maintenance fees or annuities.
The fees paid must be automatically returned to whoever is obliged to pay if the registration or the service is not provided for reasons attributable to the Patent Office .