Provides advice on IPR protection, including information on the registration of patents and trademarks.
Colombia continues to make efforts to provide effective protection and enforcement of intellectual property rights and to implement its obligations under the U.S. - Colombian Trade Promotion Agreement. Colombia belongs to the World Trade Organization (WTO), ratifying the Trade-Related Aspects of Intellectual Property (TRIPs) Agreement in December 1995, and the World Intellectual Property Organization (WIPO). It is also a signatory to the Paris Convention on Industrial Property, Geneva Convention for the Protection of Sound Recordings, Berne Convention for the Protection of Literary and Artistic Works, Brussels Convention on the Distribution of Satellite Signals, Universal Copyright Convention, the Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure, the WIPO Copyright Treaty, the WIPO Performances and Phonograms Treaty, the Patent Cooperation Treaty, the Trademark Law Treaty and the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks. Colombia also has a Patent Prosecution Highway (PPH) agreement with the United States.
The Superintendent of Industry and Commerce (SIC) and the National Copyright Directorate (DNDA) continue to be a responsive agency and reliable partner for the USG, the private sector, and civil society. Both SIC and DNDA offer electronic registration. In order to modernize the existing technology tools, in July 2016 SIC launched the new Industrial Property System (SIPI), an online tool that allows applicants to access all files through the website, manage their cases, track and receive email notifications.
The Colombian IP system is ruled by an Andean Regime, and when an Andean Law rules on a subject matter, its provisions prevail over the correspondent domestic laws. In light of the above, the applicable IP law in Colombia is the Andean Decision 486 of 2000, which sets both substantive and procedural rules. The Colombian patent process administered by SIC permits third parties to file pre-grant oppositions to a patent application challenging the patentability of an invention. More specifically, any third party with a legitimate interest may file a petition for an opposition proceeding within 60 working days following the publication date of the patent application. The SIC then determines the merits of the opposition to the patent application and issues a decision to both the patent applicant and the third party. It should be noted that under Colombia’s National Development Plan, health agencies of the government itself may soon be able to participate in opposition proceedings to challenge patent applications in the life sciences sector.
Interested parties may file trademark applications directly with SIC, which will conduct a formalities and substantive review of trademark applications in accordance with Colombian legislation and Andean Decision 486. After review, SIC will publish the application for thirty days where third parties with a legitimate interest may file an opposition to the trademark application. A trademark registration lasts for ten years with possibility of renewal. Cancellation proceedings are available. Additionally, Colombia is also a party to the Madrid System for trademarks, which offers a trademark owner the possibility to have the trademark protected in several countries by filing one application directly with the owner’s national trademark office.
While Colombia continues to promote IPR and raise public awareness, high levels of physical contraband and digital content piracy, as well as shortcomings in enforcement and market access, continue to plague the country’s IPR efforts. In addition, the pharmaceutical sector has raised concerns about Colombia’s regulation of this sector.
In an effort to enhance IP protection in Colombia and address the issue of backlog in the courts, Congress granted judicial powers to a number of administrative bodies. Law 1564 from 2012 gave the SIC, the DNDA, and the National Agricultural Institute (ICA) authority to judge civil IPR cases. The SIC was the first to implement Law 1564, which has drastically cut down delays on judicial proceedings from months to weeks. Stakeholders find the new system is efficient, quick, and professional. DNDA has now fully implemented Law 1564 and enjoys a high success rate with 41 percent of cases being resolved without a formal judicial process. With a capacity to handle 100 cases annually, DNDA is close to meeting its goal of concluding cases within one year. The High Court of the Bogotá Judicial District has appellate jurisdiction over these administrative decisions. ICA has not yet implemented the law.
Several general principles are important for effective management of intellectual property rights (IPR) in Colombia. First, it is important to have an overall strategy to protect IPR. Second, IPR is protected differently in Colombia from in the United States. Third, rights must be registered and enforced in Colombia, under local laws. Companies may wish to seek advice from local attorneys or IPR consultants. The U.S. Commercial Service’s Business Service Providers webpage offers a list of local lawyers.
It is vital that companies understand that intellectual property is primarily a private right and that the U.S. government generally cannot enforce rights for private individuals in Colombia. It is the responsibility of the rights' holders to register, protect, and enforce their rights where relevant, retaining their own counsel and advisors.
While the U.S. government is willing to assist, there is little it can do if the rights holders have not taken these fundamental steps necessary to securing and enforcing their IPR in a timely fashion. Moreover, in many countries, rights holders who delay enforcing their rights on a mistaken belief that the U.S. government can provide a political resolution to a legal problem may find that their rights have been eroded or abrogated due to doctrines such as statutes of limitations, or unreasonable delay in prosecuting a law suit. In no instance should U.S. government advice be seen as a substitute for the obligation of a rights holder to promptly pursue its case.
It is always advisable to conduct due diligence on partners. U.S. companies should consider the business objections and compliance history of the partner to protect and honor IPR requirements. Additionally, companies should give their Colombian partners clear incentives to honor the contract. A good partner is an important ally in protecting IPR. Keep an eye on your cost structure and reduce the margins (and the incentive) of would-be bad actors. Projects and sales in Colombia require constant attention. Work with legal counsel familiar with Colombian laws to create a solid contract that includes non-competition clauses, and confidentiality/non-disclosure provisions.
It is also recommended that small and medium-size companies understand the importance of working together with trade associations and organizations to support efforts to protect IPR and stop counterfeiting. There are a number of these organizations, based in Colombia and the United States. These include:
- Biotechnology Industry Organization (BIO)
- International Anti-Counterfeiting Coalition (IACC)
- International Intellectual Property Alliance (IIPA)
- International Trademark Association (INTA)
- Ministry of the Interior and of Justice, Special Administrative Department, National Copyright Directorate
- National Association of Manufacturers (NAM)
- Pharmaceutical Research and Manufacturers of America (PhRMA)
- Superintendence of Industry and Commerce
- The Business Software Alliance (BSA)
- The Coalition Against Counterfeiting and Piracy
- The U.S. Chamber of Commerce and local American Chambers of Commerce
A wealth of information on protecting IP is freely available to U.S. rights holders. Some excellent resources for companies regarding intellectual property include the following:
- For information about patent, trademark, or copyright issues -- including enforcement issues in the US and other countries -- call the STOP! Hotline: 1-866-999-HALT or visit STOPfakes.gov's website.
- For more information about registering trademarks and patents (both in the U.S. as well as in foreign countries), contact the U.S. Patent and Trademark Office (USPTO) at 1-800-786-9199.
- For more information about registering for copyright protection in the United States, contact the U.S. Copyright Office at 1-202-707-5959.
- For more information about how to evaluate, protect, and enforce intellectual property rights and how these rights may be important for businesses, please visit the “Resources” section of the STOPfakes.gov’s webpage.
- For information on obtaining and enforcing intellectual property rights and market-specific IP Toolkits visit STOPfakes.gov’s IPR toolkits webpage. The toolkits contain detailed information on protecting and enforcing IP in specific markets and also contain contact information for local IPR offices abroad and U.S. government officials available to assist SMEs.
IPR Climate in Colombia
In Colombia, regulations for the protection of IPR are in place. However, U.S. companies have concerns related to their enforcement. Particularly, companies in the pharmaceutical, music recording, computer, electronics, and software industries have encountered widespread piracy and counterfeiting of their products over many years.
Software protection is an especially difficult area for enforcement. Estimates indicate that the piracy level may be above 50 percent, and trade losses due to software piracy are calculated at around US$ 136 million. However, the government has been stepping up efforts in recent years, in order to tackle the problem, and thus defend legal manufacturers.
Such efforts have helped to somewhat reduce the piracy level in Colombia and maintain the ranking of the country among those with the lowest piracy rates in the region. U.S. companies operating in Colombia have acknowledged such efforts. However, Colombia remains on the Special 301 Watch List.
Colombia, a WTO member, has ratified legislation to implement its obligations under the Uruguay Round Agreement on Trade-Related Aspects of Intellectual Property Rights. Colombia is also a member of the World Intellectual Property Organization (WIPO), the Paris Convention for the Protection of Industrial Property, the Berne Convention for the Protection of Literary and Artistic Works, the Treaty on the International Registration of Audiovisual Works, and the 1978 Union for the Protection of New Plant Varieties, and a signatory to the Patent Cooperation Treaty.
Colombia has also addressed bilateral IPR issues in the FTA. However, even though Colombia may be able to regulate the issue, the problem of enforcement persists.
The regulatory system itself may not be the ideal structure in order to act in a coordinated manner to tackle the problem. On the one hand, the registration and administration of IPR are carried out by four different government entities. The Superintendent for Industry and Commerce (SIC) acts as the Colombian patent and trademark office. This agency also acts as the IPR policy developer.
The Colombian Agricultural Institute (Instituto Colombiano de Agricultura - ICA) is in charge of the issuance of plant variety protection-related and agro-chemical patents. The Ministry of Social Protection is in charge of the issuance of pharmaceutical patents, while the Ministry of Justice is in charge of the issuance of literary copyrights. Each of these entities suffers from significant financial and technical resource constraints.
Enforcement is carried out by another series of agencies including: Colombia’s National Tax and Customs Directorate (DIAN), the Prosecutor General’s Office, the National Police, and the Judiciary. Officials within these agencies often do not have a good understanding of IPR issues and of the severity of the offenses committed.
Periodically, the Economic Section recommends candidates for U.S. PTO training in Washington, DC.