PROSECUTION GUIDELINES

• Contracting Party of The Paris Convention: YES.
• Contracting Party of The Hague Agreement on Industrial Designs: NO.

Law No. 17,164.

6 months.

YES.

• Power of Attorney.
• Drawings displaying all views of the design.
• Description not required.
• Priority document when applicable, translated by local sworn translator.

YES.

YES. 12 months.

• Filing.
• Publication request within a 12 months term since the priority date, upon which the application is effectively published within 1-2 months.
• Payment of examination fees.
• Decision.

YES. Oppositions can be filed within 60 days from the publication. Nullity actions are also possible, within 5 years from granting or within 3 years from exploitation, whichever term expires first.

12-18 months.

10 years, extendable for 5 additional years (payment of the renewal fee has to be made in the tenth year, requesting the extension for the additional 5 years). Annuities have to be attended in order to preserve the rights.

• Contracting Party of The Paris Convention: NO.
• Contracting Party of The Madrid System: NO*.

*although can be used through the United States Federal System

Puerto Rico Trademark Act, in force since 14 February 1992, last amended by Act 169 on 16 December 2009 and further amended by Act 124-2011, which coexists with the Lanham Act.

Although part of the USA with special status, Puerto Rico has its own trade mark law independent of the USA. It is therefore no longer possible to obtain a national trade mark on the basis of an US registration.

Through the Puerto Rico Federal Relations Act the statutory laws of the United States have apply in Puerto Rico, unless they are locally inapplicable. Rights acquired under the Lanham Act are therefore valid and enforceable in Puerto Rico.

Nice classification, 10th edition.

Not possible.

Signs, such as words, names, acronyms, letters, numbers, devices, emblems, combinations or shades of colours, three-dimensional forms, sound marks, smell marks and any combination of the mentioned signs.

• Power of Attorney: Not necessary.
• Priority Claims are not possible.
• Indication of date of first use or intention of use.

• Absolute grounds for refusal: YES.
• Relative grounds for refusal: YES.

30 days from publication date.

Approximately 2 years, unless any obstacles were raised.

10 years from the date of registration.

YES. Cancellation can be requested if the trade mark has not been used for 5 years, counting from the registration date. Partial cancellation is not possible.

1 year prior to renewal date.

6 months.

https://www.uspto.gov/

• Contracting Party of The Paris Convention: YES
• Contracting Party of The Patent Cooperation Treaty (PCT): NO.

Patent Law 17.164/2000.

• Patent of Invention.
• Utility Model.

NO.

• Power of Attorney merely signed (no legalization required) within 30 days from filing.
• Assignment document from the inventors merely signed (no legalization required) within a 180 working-day term from filing. Not required under certain circumstances.
• Certified copy of priority application within 180 days from filing. The translation of the priority application must be signed by a sworn registered local translator.

NO. Late submission of the Spanish translation is acceptable within a 30-day term provided that at least, Spanish translation of the claims and abstract and the first pages of the specification are submitted upon filing the application.

YES, within 120 days from publication.

NO.

YES, within 60 working days from publication.

YES, within 60 working days from publication.

8 years.

20 years from filing date.

10 years from filing date and could be renewed for 5 more years the same for Industrial Designs.

UM suitable for utensils, instruments, tools, apparatus, devices, or any parts or improvements thereof, but not to chemical products, methods or uses; lower threshold for inventive step.

Yearly after grant.

NOT mandatory.

YES.

https://www.uspto.gov/