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Supplementary Protection in Patents

The Supplementary Protection Request of a patent consists in the right to request before the Intellectual Property Court an extended protection term for a granted patent, on grounds of the unjustified administrative delay suffered by the patent application while it was being processed before the National Institute of Industrial Property (INAPI, for its initials in Spanish).

The aforementioned request must be filed within a term of 6 months as from the date on which a patent is granted, in the event that the unjustified administrative delay causes the processing to last for more than five years, calculated as from the date of submission of the application, or of more than three years as from the date of the patent examination request, as the case may be.

Supplementary Protection was included in 2007 in the last reform made to Law No. 19,039 on Intellectual Property and, after 8 years since its implementation in our legal system, we can say that it is a highly valued tool for compensating the unjustified delay in granting a Patent.

Although the inclusion of this right has not brought about any relevant reductions in the processing timeframes by the INAPI – which was the main purpose sought by the establishment of this right in our legal system – it has however allowed the interested parties to become aware about the criteria taken into consideration by the Intellectual Property Court to grant the additional protection term in favor of the requesting party whose industrial privilege has been affected as a result of the unjustified processing delay.

In connection to the foregoing, it is relevant to highlight that even though our laws provide that Supplementary Protection shall only be granted during the period of time proven to be an unjustified administrative delay, the customary criterion applied by the Industrial Property Court has been to extend this additional protection term only for the period of time in excess of 5 years of processing.

A special note should be made of the explanations provided by the National Institute of Intellectual Property for justifying its administrative delays, which – notwithstanding the reasonable delay that the substantial analysis of an invention requires and the complexity that the novelty and the inventive degree of the same entail – are many times due to delays in the issuance of merely procedural administrative resolutions that have no justification whatsoever.

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Carmen Sánchez-Puelles