Intellectual Property Rights Toolkit

Peru

**November 2006**

Table of Contents

[**i. Message from Ambassador Struble
4**](#i.-message-from-ambassador-struble)

[Our Interagency Mission . . . 4](#our-interagency-mission-.-.-.)

[Our IPR Action Plan . . . 4](#our-ipr-action-plan-.-.-.)

[Our Mission IPR Priorities . . . 5](#our-mission-ipr-priorities-.-.-.)

[ii. Message From The Amcham IPR Committee President
6](#ii.-message-from-the-amcham-ipr-committee-president)

[Our team charter... 6](#our-team-charter)

[Our IPR action plan... 6](#our-ipr-action-plan)

[Our yearly AMCHAM IP symposium... 6](#our-yearly-amcham-ip-symposium)

[Final remarks... 6](#final-remarks)

[Chapter One: Protecting your Intellectual Property Rights (IPR) in Peru
7](#chapter-one-protecting-your-intellectual-property-rights-ipr-in-peru)

[Peru's Current IPR Environment 7](#perus-current-ipr-environment)

[The Best Protection is Prevention
7](#the-best-protection-is-prevention)

[Peru's IPR Enforcement System 9](#perus-ipr-enforcement-system)

[What the U.S. Government Can Do in IPR Infringement Cases
10](#what-the-u.s.-government-can-do-in-ipr-infringement-cases)

[Chapter 2: Industry Specific Issues
11](#chapter-2-industry-specific-issues)

[Books 11](#books)

[Clothing 11](#clothing)

[Food and Beverages 11](#food-and-beverages)

[Movies (Motion Pictures Industry) 12](#movies-motion-pictures-industry)

[Music 12](#music)

[Pharmaceuticals 12](#pharmaceuticals)

[Software 13](#software)

[Chapter 3: Copyrights 14](#chapter-3-copyrights)

[Introduction 14](#introduction)

[Domestic Legislation and Treaties
14](#domestic-legislation-and-treaties)

[What is Protected? 15](#what-is-protected)

[What is not Protected? 15](#what-is-not-protected)

[Source: Andean Community Decision 351 and Legislative Decree No. 822
16](#source-andean-community-decision-351-and-legislative-decree-no.-822)

[Registration Process 16](#registration-process)

[Market Entry Planning 18](#market-entry-planning)

[Enforcement Approaches- How to Address Infringement?
18](#enforcement-approaches--how-to-address-infringement)

[Peruvian Customs 20](#peruvian-customs)

[Other Sources of Information 21](#other-sources-of-information)

[Chapter 4: Trademarks 24](#chapter-4-trademarks)

[Introduction 24](#introduction-1)

[Historical Legislation 24](#historical-legislation)

[Domestic Legislation and Treaties
25](#domestic-legislation-and-treaties-1)

[Coverage- What Can be Registered Under Peruvian Trademark Law?
26](#coverage--what-can-be-registered-under-peruvian-trademark-law)

[Coverage- What Cannot Be Registered under Peruvian Trademark Law?
27](#coverage--what-cannot-be-registered-under-peruvian-trademark-law)

[Trademark Registration Process 28](#trademark-registration-process)

[Market Entry Planning 33](#market-entry-planning-1)

[Enforcement Approaches- How to Address Infringement
34](#enforcement-approaches--how-to-address-infringement-1)

[Peruvian Customs 35](#peruvian-customs-1)

[Other Sources of Information 35](#other-sources-of-information-1)

[Chapter 5: Patents 38](#chapter-5-patents)

[Introduction 38](#introduction-2)

[Historical Legislation 38](#historical-legislation-1)

[Domestic Legislation and Treaties:
39](#domestic-legislation-and-treaties-2)

[Coverage- What Can be Patented Under Peruvian Patent Law?
40](#coverage--what-can-be-patented-under-peruvian-patent-law)

[Coverage- What Cannot be Patented Under Peruvian Law?
40](#coverage--what-cannot-be-patented-under-peruvian-law)

[Patent Registration Process 41](#patent-registration-process)

[Market Entry Planning 45](#market-entry-planning-2)

[Enforcement Approaches- How to address Infringement?
46](#enforcement-approaches--how-to-address-infringement-2)

[Peruvian Customs 47](#peruvian-customs-2)

[Other Sources of Information 48](#other-sources-of-information-2)

[Chapter 6: Trade Secret and Unfair Competition
51](#chapter-6-trade-secret-and-unfair-competition)

[Introduction 51](#introduction-3)

[Domestic Legislation and Treaties
51](#domestic-legislation-and-treaties-3)

[What Constitutes Infringement? 51](#what-constitutes-infringement)

[How to Address Infringement 52](#how-to-address-infringement)

[Types of Actions Against Infringers:
52](#types-of-actions-against-infringers)

[Other Sources of Information 53](#other-sources-of-information-3)

[Legislation 54](#legislation)

[Reference Materials 54](#reference-materials)

[U.S. Government 55](#u.s.-government)

[American Chamber of Commerce 55](#american-chamber-of-commerce)

[List of Peruvian / U.S. Law Firms with operations in Peru
56](#list-of-peruvian-u.s.-law-firms-with-operations-in-peru)

[Industry Organizations 57](#industry-organizations)

[International Organizations 57](#international-organizations)

[Abbreviations 58](#abbreviations)

#  {#section .unnumbered}

+-----------------------------------------------------------------------+
| # i. Message from Ambassador Struble                                  |
|                                                                       |
| Intellectual property is the cornerstone of economic development,     |
| especially in the digital age. Government protection of intellectual  |
| property rights (IPR) fosters creativity, provides incentives for     |
| companies to develop new and better products, attracts investment,    |
| allows artists and artisans to make a living, and increases tax       |
| revenues. Using intellectual property without paying for it or        |
| without permission is just as much stealing as shoplifting. It is a   |
| costly crime that must be consistently punished. Roughly 7% of annual |
| global trade involves illegitimate goods -- more than \$600 billion.  |
| Counterfeiting, can be anything from selling a no name shoe under the |
| Nike name, costs U.S. businesses about \$250 billion annually. The    |
| U.S. Government is committed to improving IP protection worldwide and |
| leads global, regional and bilateral initiatives on a range of IP     |
| issues.                                                               |
|                                                                       |
| ## Our Interagency Mission . . .                                      |
|                                                                       |
| The U.S. Embassy in Lima is actively engaged in promoting IPR         |
| improvements in Peru and advocating on behalf of U.S. patent,         |
| trademark and copyright holders. The Embassy\'s Front Office, Foreign |
| Commercial Service, Economic Section, Foreign Agricultural Service,   |
| and Public Affairs Section work closely with U.S. companies, the      |
| Peruvian Government, and Washington agencies to advance IP issues. In |
| addition to monitoring the eventual implementation of the PTPA, the   |
| Embassy provides training for Peruvian IPR enforcement officials and  |
| supports efforts to increase penalties for IPR violators and to       |
| assign a judge to focus solely on IP cases.                           |
|                                                                       |
| ## Our IPR Action Plan . . .                                          |
|                                                                       |
| Peru has made important strides on intellectual property protection:  |
| raids and seizures of pirated and counterfeit goods are up, IPR       |
| legislation is stronger, and two special prosecutors are dedicated    |
| solely to IPR crimes. Upon entry into force, the U.S.-Peru Trade      |
| Promotion Agreement\'s (PTPA) state-of-the art IPR chapter will       |
| further improve IPR protection in Peru in numerous ways, including    |
| by:                                                                   |
|                                                                       |
| -   Establishing new dispute resolution mechanisms;                   |
|                                                                       |
| -   Requiring a transparent on-line system for the registration and   |
|     maintenance of trademarks, as well as a searchable database;      |
|                                                                       |
| -   Extending terms of protection for copyrighted works;              |
|                                                                       |
| -   Ensuring that governments use only legitimate computer software;  |
|                                                                       |
| -   Restoring patent terms to compensate for delays in granting the   |
|     original patent;                                                  |
|                                                                       |
| -   Protecting test data and trade secrets from unfair commercial use |
|     for a period of 5 years for pharmaceuticals and 10 years for      |
|     agricultural chemicals;                                           |
|                                                                       |
| -   Requiring a system to prevent the marketing of pharmaceutical     |
|     products that infringe patents;                                   |
|                                                                       |
| -   Criminalizing end-user piracy;                                    |
|                                                                       |
| -   Authorizing the seizure, forfeiture, and destruction of           |
|     counterfeit and pirated goods and the equipment used to produce   |
|     them;                                                             |
|                                                                       |
| -   Mandating both statutory and actual damages for copyright         |
|     infringement and trademark piracy; and                            |
|                                                                       |
| -   Granting U.S. suppliers non-discriminatory rights to bid on       |
|     contracts from Peruvian government ministries, agencies and       |
|     departments.                                                      |
|                                                                       |
| ##  Our Mission IPR Priorities . . .                                  |
|                                                                       |
| The most important thing you can do to protect your intellectual      |
| property in a foreign market is to be well prepared. The Intellectual |
| Property Toolkit gives you the information you need to take the       |
| necessary steps to protect your intellectual property in Peru. I hope |
| you will find our Toolkit helpful. It contains materials describing   |
| the scope of the IPR problem in Peru; suggestions on what U.S.        |
| companies can do to protect their IPR, and steps you should consider  |
| after an infringement comes to your attention. I wish each of you     |
| great success in your business endeavors in Peru and assure you that  |
| the Embassy stands ready to assist you in any way that we can.        |
|                                                                       |
| Sincerely,                                                            |
|                                                                       |
| J. Curtis Struble                                                     |
|                                                                       |
| Ambassador                                                            |
+-----------------------------------------------------------------------+

# ii. Message From The Amcham IPR Committee President

Members of multiple sectors representing American interests in Peru have
gathered in the AMCHAM's IP committee, to voice experiences, share
concerns, and develop an action plan to strengthen the respect for
intellectual property in the country. Despite some efforts from the
national authorities, different types of violations of IP rights are
seen in the entertainment, pharmaceutical and software industry. These
violations range from the widespread existence of piracy, to
counterfeiting; from lack of patent granting to lack of mechanisms to
enforce the existing regulation, among others.

## Our team charter...

Our mission is to develop a shared agenda with all the country
stakeholders interested in the development and respect of IP in Peru,
focused on understanding the most important barriers and developing an
efficacious action plan.

## Our IPR action plan...

Our action plan is comprised of activities intended to increase
awareness of the current status in the country and the benefits of
respecting IP. These activities are mainly informational sessions
catered to government officials, administrative authorities and the lay
public.

## Our yearly AMCHAM IP symposium...

Every year, the AMCHAM IPR committee organizes a major symposium
involving important national authorities, the Switzerland and U.S.
Ambassadors, important administrative officials and selected members of
the Peruvian business sector. The symposium has a plenary and two
workshops (one led by the software industry and one by the
pharmaceutical industry).

## Final remarks...

Peru poises interesting opportunities for companies willing to commit
efforts and investment to the market. Challenges are not minor but the
sum of the efforts of the Peruvian leaders who see IP as a milestone for
the development of the country, the U.S. Embassy and the private sector
is yielding improvements that encourage us about the prospects of the
country.

Sincerely,

Gustavo Pesquin

# Chapter One: Protecting your Intellectual Property Rights (IPR) in Peru

This section includes:

-   Peru's Current IPR Environment

-   The Best Protection is Prevention

-   Peru's Enforcement System

-   What the U.S. Government Can Do in IPR Infringement Cases

## Peru's Current IPR Environment

While Peru has signaled its commitment in recent years to stronger IPR
protection (i.e. by strengthening its legal framework), it still falters
in the enforcement of these obligations. In many industries, piracy and
counterfeiting of products approaches levels greater than 90%. This
widespread piracy in areas such as digital duplication, illegal copying,
and the manufacturer of fake goods has all but forced out many
legitimate businesses. U.S. exporters lose millions of dollars annually
to this piracy. For example, U.S. industries protected by copyrights
suffered trade losses of greater than \$95 million in 2005 in Peru
alone.

Factors that enable this wide-spread infringement and undermine
enforcement measures include: limited resources and training of customs,
police, and INDECOPI officials, limited public awareness as to the
economic and social damages caused by IPR infringement, corruption among
customs and police, and Peru's heavily burdened judiciary.

## 

## The Best Protection is Prevention

As noted, Peru has ratified many international conventions (including
the WIPO, Paris, and WTO conventions), and has passed many laws
(including the 1996 Copyright Law, the Industrial Property Law, and the
Andean Community Decision 486). To seek protection under these laws, a
company must register certain aspects (patents, and trademarks) of its
intellectual property with Peru's Intellectual Property Office
(INDECOPI). Furthermore, while not required, INDECOPI suggests that one
register one's copyrights with their office in order to assist in
potential enforcement actions. A brief summary of this toolkit's
chapters on Peru's copyright, patent, trademark, and trade secrets laws
follows. For more information, it is recommended that you review the
relevant chapters of this toolkit section with your legal counsel.

**Copyrights:** Peruvian law does not require an author to register to
obtain the right to copyright protection in Peru. Instead, one receives
this right of protection upon creation of their work.[^1] Unlike patents
and trademarks, this protection only covers the *form* *of expression*
of the ideas, rather than the *ideas* themselves. Peruvian Legislative
Degree 822 and the Andean Community Decision 351 give the Office of
Rights of the Author (*La Oficina de Derechos de Autor*) at INDECOPI the
responsibility to protect these creations. Unfortunately, this office
has done little to enforce these rights and the practice of piracy runs
rampant throughout Peru. This piracy has saturated the market with cheap
music, DVDs, books, and software, and has all but forced out legitimate
sellers of these materials.

**Patents**: The first instances of registration and protection of
inventions in Peru came during the Spanish colonial government. After
its independence, Peru passed its first formal law in 1869. This law has
been updated many times since with its most recent modifications coming
with the passage of the Legislative Decree 823- Industrial Property Law
in 1996 and the Andean Community Decision 486 in 2000. To comply with
the U.S.-Peru Trade Promotion Agreement (USPTPA), Peru will need to
further modify its patent protection, by ratifying or acceding to the
Patent Cooperation Treaty of 1970. Peru is also required to make a
reasonable effort to pass the Patent Law Treaty of 2000. Like most
countries including those of the European Union, Peru follows a
first-to-file system for patents, which means patents are granted to
those that file first even if the filers are not the original inventors.
This system is unlike the United States' unique system, which recognizes
the "first to invent" rule. In Peru, the Office of Inventions and New
Technologies *(la Oficina de Invenciones y Nuevas Tecnologías*) governs
the patent application process and protection of these patents against
infringement. Its mixed enforcement powers allow it to cease
infringements and destroy infringing goods, but not the ability to levy
indemnification fines upon the guilty party. Most patent infringement
cases in Peru occur in the pharmaceutical industry.

**Trademarks**: Spain's colonial occupation of Peru brought with it the
idea of private property. The first law specific to trademarks came in
1892 with the Law of Trademarks. This law has been updated many times
since, with its most recent modifications coming with the passage of the
Legislative Decree 823- Industrial Property Law in 1996 and the Andean
Community Decision 486 in 2000. To comply with the U.S.-Peru Trade
Promotion Agreement (USPTPA), Peru will need to further modify its
trademark protection, by ratifying or acceding to the Trademark Law
Treaty of 1994. Peru is also required to make a reasonable effort to
pass the Protocol Relating to the Madrid Agreement Concerning the
International Registration of Marks of 1989. Peru has a \"first-to
file\" system that requires no evidence of prior use or ownership,
leaving registration of popular foreign marks open to third parties.
U.S. firms seeking to distribute their products in Peru are advised to
register their marks and/or logos with the Office of Distinct Signs (*la
Oficina de Signos Distintivos*) at INDECOPI. This office controls the
registration process as well as opposition, cancellation, nullification,
and protection of trademarks. The office is regulated by the Industrial
Property Law 823, the Andean Community Decision 486, the Paris
Convention for the Protection of Intellectual Property, and the Law
concerning the functions of INDECOPI.

**Trade Secrets and Unfair Competition:** An agency of INDECOPI's Office
of Inventions and New Technologies, the Commission on Unfair Competition
(*la Comisión de Competencia Desleal*), provides for the protection
against illegal disclosure, acquisition, or use of a firm's trade
secrets. To be protected the information must not be common knowledge
within industry circles and must have some commercial value. The firm
must also have taken previous steps to prevent any illegal information
disclosure. Finally, the firm should decide whether their trade secret
is patentable and if so, whether undertaking the patent process makes
sense for this secret. Distinct advantages of trade secret protection
include: no registration costs, no disclosure requirements to government
agencies, no limits on time, and no delays in implementation (i.e. it
takes immediate effect.)

## Peru's IPR Enforcement System

In 1992, Peru passed Law No. 26017 or the General Law of Industrial
Property. This law expanded the scope of intellectual property control
and created the new organization called INDECOPI. This law also divided
responsibilities within this new organization by creating the Office of
Distinct Signs (for trademark protection), the Office of Inventions and
New Technologies (for patent protection), and the Court for the Defense
of Competition and Intellectual property (appeals court). Along with the
Office of the Rights of the Author (for copyright protection), these
offices govern the administrative enforcement of intellectual property
infringement cases.

When a company believes infringement of their intellectual property
rights is occurring, they can first seek an administrative response from
INDECOPI. According to Peru's laws, INDECOPI will investigate the claim,
temporarily stop the production and/or sale of the good, and determine
appropriate administrative and/or indemnification fines if infringement
has occurred. Unfortunately, INDECOPI has struggled with the
effectiveness of its enforcement and piracy exists across many sectors
of the Peruvian economy. If a company receives a favorable
administrative ruling, they may seek damages within the Peruvian
judiciary system. Often the judiciary fails to deliver any deterrent
sentences upon the infringing parties.

**Administrative Enforcement**

The National Institute for the Defense of Competition and Intellectual
Property (known by its Spanish language acronym INDECOPI) has the power
to investigate claims of infringement, fine the infringer, and seize and
destroy infringing products and equipment used in their manufacture. In
many cases, INDECOPI cannot award compensatory damages to the rights
holder. Instead, INDECOPI levies fines in order to deter future
infringement and to pay for its organization's costs. INDECOPI is
divided into four offices, the Office of the Rights of the Author
(Copyright Office), the Office of Inventions and New Technologies
(Patent Office), the Office of Distinct Signs (Trademark Office), and
the Intellectual Property Court.

These offices can be reached at

**INDECOPI**

Calle de la Prosa 138

San Borja,

Lima, Peru

Tel: (51) 1-224-7800, (51) 1-224-7777

Fax: (51) 1-224-0348

Websites: [http://www.indecopi.gob.pe](http://www.indecopi.gob.pe/)

## What the U.S. Government Can Do in IPR Infringement Cases

Because intellectual property rights are private rights, the U.S.
government can only provide limited direct assistance. While the U.S.
government can provide companies with information in navigating Peru's
legal system, it cannot provide legal advice or advocate on a company's
behalf during infringement proceedings. Hiring local counsel will allow
the company legal means with which to protect its intellectual property
rights before and after infringement occurs.

If the company has determined that infringement is occurring, they may
decide to initiate action within INDECOPI's administrative track. If
requested, the U.S. government will monitor the case. The Department of
Commerce also maintains a database of IPR disputes that U.S. companies
bring to our attention. The U.S. government cannot intervene in these
cases. However, we can inquire about their status or contact government
officials about concerns related to the legal remedies to IPR holders in
general. As with other types of commercial disputes, the U.S.
government's efforts in assisting with IPR disputes are aimed at
achieving a fair and timely resolution in accordance with international
commitments and Peruvian laws, and in advancing adequate legal and
judicial protection for all parties.

To report an IPR related trade complaint, or get more information, call
1-866-999-4258. In addition, the Department of Commerce's Trade
Compliance Center (TCC) actively monitors and tracks trade barrier
complaints filed by U.S. companies. The TCC also maintains a trade
barrier toolkit on its website, which provides comprehensive advice on
dealing with trade problems. Companies seeking to file a trade barrier
complaint with the TCC may do so at the [TCC
website](http://tcc.export.gov/).

*We strongly emphasize that the information provided above by no means
constitutes legal advice and should not be a substitute for advice of
counsel. Its intended purpose is to provide an overview of Peru's IPR
environment, available enforcement mechanisms, and Peruvian government
offices sharing jurisdiction over IPR protection and enforcement. We
recommend that U.S. companies seeking to do business in Peru or facing
IPR infringement issues retain qualified U.S. and/or Peruvian legal
counsel and pursue their rights through Peru's IPR enforcement regime.*

# Chapter 2: Industry Specific Issues

## Books 

Piracy of books remains a problem in Peru. Organized operations
photocopy these copyrighted works (fiction, non fiction, text books, and
trade books) and illegally distribute them at a fraction of the original
price. This distribution occurs at newspaper stands, book fairs, and on
street corners often within blocks of Peruvian government buildings or
university campuses. Like other forms of piracy, book piracy has damaged
the legitimate efforts of the local book industry. According to the
IIPA, this piracy amounted to a trade loss of \$9 million in 2005. Peru
has recently enacted legislation (Law No. 28086) to curb this piracy,
improve access, and to promote the value of the legitimate book
industry. This law also created another organization (el *Consejo
Nacional de Democratización del Libro y de Fomento de la Lectura or
PROMOLIBRO*) to aid in the improvement of the book industry within Peru.

## Clothing

Unfortunately, trademark infringement in the clothing industry still
persists in Peru. Large black markets and distribution centers and
independent shops continue to sell large volumes of counterfeit
clothing. These stores sell a wide variety of counterfeit goods ranging
from jeans, pants, shirts, socks, undergarments, shoes, suits, and ties.
Like other areas, INDECOPI often raids these distribution centers and
seizes the goods. Often, instead of destroying the goods, INDECOPI
attempts to remove the infringing trademark and donate the good to
charity. In an extreme case, INDECOPI seized 500,000 pairs of jeans
infringing Levi Strauss's trademark. It continues to store these jeans,
as it has been unable to ensure that these jeans will reenter the
economy. Besides counterfeit products, copyright holders often face
challenges to their mark from applicants that seek to register similar
trademarks. When successful, these applications dilute the value of the
trademark.

## 

## Food and Beverages

# 

Trademark infringement also occurs within the food and beverage
industry. This infringement occurs by deliberate counterfeiting,
registering in bad faith, and manufacturing an extremely close
imitation. Counterfeiting often occurs with beverages such as Coca-Cola
and Pepsi Cola. Infringers manufacture a product similar in appearance,
inferior in quality, and cheaper in price. Registration in bad faith
occurs when the applicant attempts to register a trademark similar to a
well-known mark of a food and beverage industry company. For example,
applicants frequently attempt to register trademarks that vary only
slightly from beverage trademarks of Coca Cola and Red Bull's
trademarks. Because these bad faith registrations are generally denied,
the infringer may decide to not attempt this registration. Instead the
infringer will simply manufacture extremely close imitations of
well-known marks. These imitations, like Coa Colo and Coco Cola instead
of Coca Cola, often create confusion for the customer and dilute the
value of the trademark.

## 

## Movies (Motion Pictures Industry)

Like other copyright protected goods, piracy within the motion pictures
sector continues to increase to an estimated 75% of the market. Pirated
optical discs and DVDs of movies, concerts, and television shows are
widely available throughout Peru. Cable TV piracy also persists in
cities outside of Lima. These counterfeit products are distributed in
both formal and informal street markets, newspaper stands, on street
corners, home delivery, through rental stores, and through large black
market distribution centers. One can find thousands of illegally copied
or produced DVDs in each of these large distribution centers. Often
these DVDs consist of poorly made, pre-theatrical release pirated
products. In 2005, INDECOPI and Peru's Tax and Customs Authority (SUNAT)
conducted more than 60 raids on these large-scale distribution centers.
These raids have not deterred these distribution centers as all of these
centers continue to distribute pirated products. According to Jose Vega,
General Manager of Blockbuster Peru, the motion picture industry lost
\$5 million dollars in 2005 to this movie piracy.

## 

## Music

Piracy within the music industry severely dwarfs all legitimate activity
and increased to 98% in 2005. This piracy has saturated the market with
cheap cassettes, cds, and cd-rs, selling for around \$2 each. Like the
motion picture industry, these counterfeit products are distributed in a
variety of channels including formal and informal street markets,
newspaper stands, on street corners, home delivery, and through large
black market distribution centers. This piracy has resulted in a
collapse of the legitimate recording industry. For example, in 2004 Sony
Music and Warner Music closed operations in Peru.

SUNAT estimates that ten blank cd-rs are legally imported for every
single cd sold. INDECOPI estimates that only 10% of these imports were
used for legal purposes. Besides these legitimate imports, millions of
blank cd-rs are smuggled into the country through Tacna in Chile for the
production of pirated cds. In 2005, the local recording industry and
INDECOPI seized 2 million cd-rs and 500,000 blank cd-rs. These raids
have had little impact on piracy as the seized product is quickly
replaced and deterrent punishment of the venders has been non-existent.
Estimates suggest that approximately 20 million pirated cd-rs are sold
in Peru every year.

## Pharmaceuticals

The pharmaceutical sector faces two intellectual property infringement
issues in Peru. First, both Peruvian and foreign pharmaceutical firms
introduce generic versions of pharmaceuticals still protected under
patents in Peru. Hospitals, pharmacies, and doctor's offices often
purchase these substitutes, costing the actual patent holder thousands
of dollars. While these patent holders may use INDECOPI's administrative
process to protect their patents, the process often costs them both in
time and lost sales. Besides the introduction of generic substitutes,
frequently unscrupulous companies introduce counterfeit versions of the
original pharmaceutical. These fake medicines are produced and packaged
to look like the original pharmaceutical. For example, the
counterfeiters often stamp each tablet with the original company's brand
and package them in blister packs. Despite their similar appearance
however, they often are made with incorrect ingredients, and no or
insufficient active ingredients under unsanitary conditions. Obviously,
these faulty products both dilute the company's trademarks and worse
cause severe harm to the consumers' health. In 2005, the Peruvian police
attempted to constrain the sale of these pharmaceuticals through 54
raids and seizures. One raid in 2005 produced four tons of counterfeit
pharmaceuticals after many epileptic and diabetic patients were
hospitalized after taking medicine that contained feces and dangerous
bacteria.

## Software

Piracy within the software sector has targeted both the business and
entertainment segments. Many small and medium sized organizations
illegally duplicate business software for use within their
organizations. Other times, individuals or organizations purchase
illegal copies of business software at semi-organized bazaars. Venders
sell illegal entertainment software in the same channels as other
pirated copyright goods. Actions within Peruvian government's
procurement of software have also negatively impacted their overall
attempts at curbing piracy within the Peruvian business software
industry. In 2003, the Peruvian government published the Government
Software Legalization Degree, which stated that all public entities must
use legal software. It set a deadline of March 31, 2005 for its agencies
to provide an inventory of their software and to erase all infringing
software. Unfortunately, in May 2005, it postponed the enforcement of
these agency obligations until December 2006. In 2005, estimated piracy
levels of business software were 73% and trade losses due to this piracy
were \$40 million.

## 

# Chapter 3: Copyrights

This section covers:

-   Introduction

-   Historical Legislation

-   Domestic Legislation and Treaties

-   What is protected?

-   What is not protected?

-   Registration Process

-   Market Entry Planning

-   Enforcement Approaches- How to Address Infringement?

-   Types of Actions Against Infringers

-   Peruvian Customs

-   Other Sources of Information

# 

## Introduction

A work is protected upon creation. Unlike patents or trademarks,
Peruvian law does not require registration to obtain copyright
protection.[^2] Legislative Degree 822 and the Andean Community Decision
351 give the Office of Rights of the Author (*La Oficina de Derechos de
Autor*) at INDECOPI the responsibility to protect these creations.
Rampant piracy has all but eliminated the market for legitimate vendors
of music, movies, and software.

*For additional information, please see the [Ask the
Experts](#_Ask_the_Experts) section below.*

## 

## Domestic Legislation and Treaties

# 

[Legislative Decree
822](http://www.wipo.int/clea/docs_new/pdf/en/pe/pe003en.pdf)- Copyright
Law (*Decreto Legislativo 822- Ley Sobre El Derecho de Autor*)

[Andean Community Decision
351](http://www.wipo.int/clea/docs_new/pdf/en/ac/ac003en.pdf)- Common
Provisions on Copyright and Neighboring Rights *(El Régimen Común sobre
Derecho de Autor y Derechos Conexos 351)*

[Law No.
28086](http://www.minedu.gob.pe/normatividad/leyes/ley_28086.pdf#search=):
Law of the Democratization of the Book and the Development of Reading

[Law No.
28289](http://www.congreso.gob.pe/ntley/imagenes/Leyes/28289.pdf):
Amendments to Articles 217, 218, and 219 of the Criminal Code

[Law No.
28571](http://200.121.68.202/portalIndecopiWebApp/ArchivosPortal/estatico/legislacion/oda/LEY28571.pdf):
Amendments to Articles 188 and 189 of Legislative Degree 822 (*Ley Que
Modifica Los Artículos 188º Y 189º Del Decreto Legislativo Nº 82*2)

[Government Software Legalization
Decree](http://www.pcm.gob.pe/portal_ongei/Banco_Normas/013-2003-PCM.pdf)-
(*Decreto Supremo No. 013-2003-PCM*)

Peru is a member and/or has ratified the following agreements:

-   [Berne Convention for the Protection of Literary and Artistic
    Works](http://www.wipo.int/treaties/en/ip/berne/pdf/trtdocs_wo001.pdf)
    (Since 1988)

-   [Brussels Convention Relating to the Distribution of
    Program-Carrying Signals Transmitted by
    Satellite](http://www.wipo.int/treaties/en/ip/brussels/pdf/trtdocs_wo025.pdf)
    (Since 1985)

-   [Geneva Convention for the Protection of Producers of Phonograms
    Against Unauthorized Duplication of Their
    Phonograms](http://www.wipo.int/treaties/en/ip/phonograms/pdf/trtdocs_wo023.pdf)
    (Since 1985)

-   [Rome Convention for the Protection of Performers, Producers, of
    Phonograms and Broadcasting
    Organizations.](http://www.wipo.int/treaties/en/ip/rome/pdf/trtdocs_wo024.pdf)
    (Since 1985)

-   [WIPO Copyright Treaty
    (WCT)](http://www.wipo.int/treaties/en/ip/wct/pdf/trtdocs_wo033.pdf)
    (Since 2002)

-   [WIPO Performances and Phonograms Treaty
    (WPPT)](http://www.wipo.int/treaties/en/ip/wppt/pdf/trtdocs_wo034.pdf)
    (Since 2002)

# 

## What is Protected?

Copyright protection covers:

-   Written and Oral works

-   Musical, dramatic, choreographed, and cinematographic works

-   Fine Art (including drawings, paintings, sculptures, engravings, and
    lithographs)

-   Architecture

-   Photography

-   Applied Art

-   Illustrations, maps, sketches, plans, diagrams and three-dimensional
    works

-   Computer software

-   Anthologies or compilations of assorted works

## What is not Protected?

Protection does not extend to:

-   Ideas

-   Methods of operation and mathematical concepts

-   Procedures

-   Official texts like laws, jurisprudence, and official translations

Copyright holders maintain both moral and economic rights. Moral rights
last indefinitely. In most cases, economic rights last for the life of
the author plus 70 years. For collective works, computer programs, and
audio-visual works protection lasts for 70 years after publication.

***Economic rights include the right to perform, authorize, or
prohibit:***

-   The reproduction,

-   Communication to the public,

-   Distribution,

-   Importation, and

-   Translation, adaptation, arrangement, or other transformation of
    their work.

## Source: Andean Community Decision 351 and Legislative Decree No. 822

## 

## Registration Process[^3]

Although not required for protection, an author may register their work
with INDECOPI. This registration allows the applicant to right to
publicity and proof of priority of their copyright. Registration might
assist in any subsequent enforcement proceedings.

**Step 1: Obtain Legal Counsel**

Before registering a work, one should obtain qualified legal counsel in
Peru. Registrations include complicated aspects including: making a
search to ensure that the copyright has not previously been registered
understanding application materials including legal jargon,
corresponding with INDECOPI, making any necessary amendments to the
original application, monitoring applications by third parties, and
monitoring the sector for possible infringements.

**Step 2: Determine Whether the Copyright is Eligible for Registration**

An intellectual property agent will help one understand if their work is
eligible for copyright registration. For further information, see
"Coverage..." for what is eligible for protection. Also, before filing
copyright application, it is advisable that one conduct a copyright
search (Búsqueda de Antecedentes Fonéticos) to determine if their
copyright or a close variation has been registered.

**Step 3: Prepare the Required Paperwork**

This application include details such as:

-   The name, address, telephone number, national identity number, and
    the nationality of the author

-   The name, address, telephone number, and the national identity
    number of the legal representative

-   Title of the work

-   Example of the work.

# 

**Step 4: Submit the Application**

In Peru, the Office of the Rights of the Author (hereafter known as the
Copyright Office) grants the registration of copyrights in Peru. To
officially begin the copyright registration process, the applicant must
pay 5% of the UIT at the offices of INDECOPI.[^4] After paying the
application fee, the applicant presents an official application to
INDECOPI.

**Step 5: Review by the Office of the Rights of the Author**

Following this submission, the Copyright Office will undertake a
preliminary review of the application materials. Fifteen working days
after paying the application fee and submitting the document, the
applicant will receive either an approval or rejection of their
application.

**Step 6: After the Notification of Resolution\
**

If an applicant's copyright application is unsuccessful, they file a
Motion for Reconsideration (*Recurso de reconsideración*) or a Motion
for Appeal (*Recurso de Apelación y/o Adhesión*) at the Head of the
Copyright Office. The Motion for Reconsideration costs 9% of the UIT and
must be filed within 15 days of the official notification of the
decision. The appeal, costing 14.00% of the UIT, must be filed with the
Copyright Office within 15 working days. This appeal will be heard by
INDECOPI's Intellectual Property Court (*La Sala de Propiedad
Intelectual del Tribunal*).

**Source**: Andean Community Decision 486, Article 147; Law Decree 822

![](media/image1.wmf){width="6.198611111111111in"
height="5.625694444444444in"}

## Market Entry Planning

In recent years, Peru has adopted legislation (Legislative Degree 822,
Government Software Legislation Decree), created commissions (High Level
Multi-Sector Commission against Contraband and Piracy), and signed
treaties (WCT, WPPT, USPTPA) all in part designed to better protect
copyrights in Peru. Unfortunately, despite this stronger statutory
protection and due to a lack of enforcement, Peru continues to face a
severe piracy problem. According to the International Intellectual
Property Alliance, total piracy losses for the music, software, motion
picture, and publishing industry topped \$98 million in 2005. In Peru,
one can easily find cheap pirated material including music cds, DVDs,
business and entertainment software, and books in Peruvian shops, formal
markets, newspaper stands, private businesses, and government agencies.

Before entering the Peruvian market, a company should conduct an audit
of their intellectual property. In this audit, the company will gather
internal company materials such as business plans, publications,
strategies, and technical publications. This audit will assist the
company in the developing their copyright strategy as well as their
international intellectual property strategy.

A company should also research the legal and regulatory environment well
in advance of their market entry of Peru. During this research, the firm
can uncover any discrepancies between the stated laws and the actual
enforcement of these laws in Peru. It may also uncover potential
products that will likely infringe upon the copyrights. Trade
associations, industry groups, lawyers, security experts, and other
companies can help one in uncovering the real market from the
theoretical. Moreover, the company should be aware of how Peru's
intellectual property statutes differ from the United States'.

Ultimately, a company should take a protective and preventive stance to
prevent any unauthorized use of their intellectual property. Use every
legal means available to prevent the possibility of copyright
infringement before it happens. To protect their copyright once an
infringement occurs, the company will have to invest considerable
resources such as time and money to address the infringement through
INDECOPI's lengthy administrative process and the overwhelmed Peruvian
court system.

## Enforcement Approaches- How to Address Infringement?

Under the Peruvian legal system, a copyright holder may chose among
administrative, civil and criminal actions to enforce their intellectual
property rights and may also request Peruvian customs to takes measures
against an infringing party. Most cases of copyright infringement are
settled through the administrative channels offered by the Copyright
Office (Office of the Right of the Author) within INDECOPI. Moreover,
unlike in patent and trademark administrative actions, the Copyright
Office may also force the infringing party to pay compensation to the
copyright holder. When administrative channels have been exhausted, the
copyright holder may also bring an action for claims or damages before
the civil courts and may also request that the Public Prosecutor's
Office institute criminal proceedings.

**Administrative Actions**

INDECOPI offers several administrative options for copyright holders who
suspect infringement of their goods. These options include: an
infringement action (*denuncia*), a nullification action (*procedimiento
de nulidad*), an inspective visit (*visita inspectiva*), a restraining
order (*medida cautelar*), and mediation action (*solicitud de
mediación*) with the Copyright Office.

Through these actions, the copyright holder may request that INDECOPI:

-   Undertake inspections of locations where infringement may be
    occurring

-   Force an immediate suspension of the alleged activity and cease the
    production and sale of all potentially infringing goods

-   Destroy all infringing goods and materials used in their manufacture

-   Fine the infringers found guilty within the Copyright Office's
    administrative process

-   Order the guilty party to agree not to export or import further
    infringing goods and order the guilty party to compensate the
    copyright owner for damages (*derechos devengados*)

Depending upon the type of action requested, these motions cost between
5-10% of the UIT. These motions should also include relevant details
such as:

-   The identification number of the copyright holder and their attorney

-   A description of the copyright being infringed upon

-   A description of the alleged infringement including details such as
    the infringing party's name, business identification number,
    business name, business address, location and methods of the
    infringing activity, and all other relevant details.

After conducting an investigation, the Copyright Office will rule on the
merit of the motions by issuing a notification, and if necessary enact
these motions within 30 business days. Either party involved has the
right to appeal the Copyright Office's decision. This appeal must be
filed with INDECOPI's Intellectual Property Court within 5 days of this
notification and costs 14% of the UIT.

Despite these clearly defined administrative procedures, INDECOPI often
fails to act effectively against infringers, especially the large-scale
infringers at markets, like Polvos Azules, El Hueco, and Polvos Rosados.
Merchants at these establishments often fight the police and INDECOPI's
attempts at entering the premises where the infringement is occurring.
Bribes and payoffs often give the merchants advanced warning of these
raids. When goods are successfully seized, the merchants simply replace
their inventory and carry on with business as usual.

If the Copyright office rules infringement has occurred, it may levy a
fine (*multa*) up to 150 UIT upon the infringing party. The severity of
this fine depends upon the level of infringement, the nature of the
cooperation by the infringer during the proceedings, previous history of
the defendant, and the general precedent of previous fines. INDECOPI
uses these fines as a means to dissuade future infractions from the
infringing party and unrelated third parties.

Unlike patent and trademark denouncements, the Copyright Office may also
force the infringing party to pay compensation (*derechos devengados*)
to the copyright holder. According to the 1996 Copyright Law (Article
217), these compensatory damages must exceed the value of comparable and
legitimate copyrighted products. Unfortunately, INDECOPI often levies
these compensatory fines at a rate considerably less than this amount.
For example, in the case of software infringement, the Copyright Office
often assesses the compensatory damages at 20% of the legitimate value
of the software, instead of the full value. It justifies these damages
based upon an interpretation of historical book publishing net profits.
Finally, despite the ability to determine these fines, INDECOPI lacks
the ability to enforce these fines and to collect these compensatory
damages once levied. This inability often forces the copyright holder to
seek damages in the burdened Peruvian court system.

**Legal Action**

If a copyright holder receives a favorable ruling in their motions, they
may choose to bring forth further legal action in the Peruvian court
system. If found guilty within the legal system, Peruvian criminal law
allows the judiciary to impose imprisonment (between 2-8 years) and/or
indemnification fines (between 30-120 an average day's wages) upon the
infringer. The judiciary bases these fines upon the seriousness, and
frequency of the infringing action. Unfortunately, the judiciary always
suspends the imprisonment sentences of guilty infringers. Currently, no
copyright infringers have served any jail time. The guilty party must
also agree not to work in the same field that the infringement occurred
for one year after they finish their incarceration.

**Source**: Legislative Degree 822, Law 28289

## Peruvian Customs

When copyright holders have suspicions of possible infringement, they
may present the Peruvian customs authority (SUNAT) with detailed
information as to the alleged infringement. If the customs authority
agrees with their suspicions, the copyright holder may request that
Peruvian customs prevent any further importation or exportation of the
alleged counterfeit good. The customs authority will then allow the
copyright holders the opportunity to participate in the inspection of
the alleged counterfeit goods. The original importer or exporter of the
goods shall be given the same opportunity. While Peruvian customs has 48
hours to enforce this inspection, frequently they will wait until the
importers of the suspect container pay the customs duties. In many
cases, the importer will simply not claim the suspect container, nor pay
for its customs clearance. Thus the containers sit in Peruvian customs
indefinitely without the copyright holder nor the Copyright Office being
able to determine the legitimacy of the suspect goods.

If a customs inspection is realized, the customs authority may still
rule against the copyright holder's motions. In this case, the customs
authority orders a temporary suspension and then notifies both parties
of its decision. The copyright holder has 10 business days to dispute
this ruling through an initiation of infringement proceedings. If the
copyright holder fails to act, this temporary suspension shall be lifted
and the goods will be released.

**Source**: Andean Community Decision 486: Articles 250, 251, 252, 253,
254.

## Other Sources of Information

[]{#_Ask_the_Experts .anchor}**Ask the Experts**

***Disclaimer**: Inclusion of material in this IPR Toolkit does not
constitute legal advice and is not a substitute for advice of legal
counsel and is subject to change according to the laws of Peru. The
United States Government will strive to update and improve this IPR
Toolkit as information becomes available and as U.S. government
resources allow. Additionally, the U.S. Government, the U.S. Department
of Commerce, its employees, and its contractors, assume no legal
liability for the accuracy or, completeness, or usefulness of any
information, resource, or process contained disclosed herein.*

***Links to External Web Sites:** Links to web sites outside the U.S.
Federal Government or the use of trade, firm, or corporation names
within the U.S. Department of Commerce web sites are provided for the
convenience of the user. Such links or use does not constitute an
official endorsement or approval by the U.S. Government of any private
sector web site, product, or service.*

**General Intellectual Property Links**

[Andean Community Section on Intellectual Property
(Spanish)](http://www.comunidadandina.org/propiedad.htm)

[Andean Community Decision
351](http://www.wipo.int/clea/docs_new/pdf/en/ac/ac003en.pdf)

[Business Software Alliance Peru](http://www.bsaperu.org/index.asp)

[International Intellectual Property Alliance](http://www.iipa.com/)
(IIPA)

[WIPO Intellectual Property Handbook: Policy, Law and
Use](http://www.wipo.int/about-ip/en/iprm/)

[Special Commission against Counterfeiting and
Piracy](http://www.contracopia.org.pe/) *(Comisión de Lucha contra la
Falsificación y la Piratería)*

**INDECOPI Forms and Documents**

[Application for the Registration of Audiovisual Works and Moving
Images](http://200.121.68.202/portalIndecopiWebApp/ArchivosPortal/estatico/formatos/oda/F-ODA-01.doc)

[Application for the Registration of Software and
Databases](http://200.121.68.202/portalIndecopiWebApp/ArchivosPortal/estatico/formatos/oda/F-ODA-02.doc)

[Application for the Registration of Literary
Works](http://200.121.68.202/portalIndecopiWebApp/ArchivosPortal/estatico/formatos/oda/F-ODA-03B.doc)

[Application for the Registration of Artistic Works and Applied
Art](http://200.121.68.202/portalIndecopiWebApp/ArchivosPortal/estatico/formatos/oda/F-ODA-04.doc)

[Application for the Registration of
Phonograms](http://200.121.68.202/portalIndecopiWebApp/ArchivosPortal/estatico/formatos/oda/F-ODA-05.doc)

[Application for the Registration of Acts and Collective Managing
Partnership
Contracts](http://200.121.68.202/portalIndecopiWebApp/ArchivosPortal/estatico/formatos/oda/F-ODA-06.doc)

[Application for the Registration of Catalogs, Albums, Albums,
Collections and Similar
Works](http://200.121.68.202/portalIndecopiWebApp/ArchivosPortal/estatico/formatos/oda/F-ODA-07.doc)

[Application for the Modification of a
Registration](http://200.121.68.202/portalIndecopiWebApp/ArchivosPortal/estatico/formatos/oda/F-ODA-08.doc)

[Application for the Registration of Artistic
Interpretations](http://200.121.68.202/portalIndecopiWebApp/ArchivosPortal/estatico/formatos/oda/F-ODA-09.doc)

[Application for the Registration of Authors, Editors, and
Producers](http://200.121.68.202/portalIndecopiWebApp/ArchivosPortal/estatico/formatos/oda/F-ODA-12.doc)

[Application for the Registration of Licenses, Contracts to Cease Rights
or Transfer Patrimonial
Rights](http://200.121.68.202/portalIndecopiWebApp/ArchivosPortal/estatico/formatos/oda/F-ODA-13.doc)

[Paper to Withdraw
Rights](http://200.121.68.202/portalIndecopiWebApp/ArchivosPortal/estatico/formatos/oda/ODA-Poderes.doc)

**Legislation**

[Peruvian IP
Legislation](http://www.wipo.int/clea/en/clea_tree1.jsp?expand=PE#PE)

**Recent Cases Involving U.S. Copyright Holders**

[Marvel Characters Inc. vs. Fox International
S.A.C.](http://200.121.68.210/SPI_Jurisprudencia/documentos/1-45/2006/20060000775.pdf)

[Disney Enterprises Inc. vs. Fox International
S.A.C.](http://200.121.68.210/SPI_Jurisprudencia/documentos/1-45/2006/20060000774.pdf)

[Lost International, LLC vs. Lidia Marchena
Cabada](http://200.121.68.210/SPI_Jurisprudencia/documentos/1-45/2006/20060000630.pdf)

[Microsoft Corporation vs. Asociación Educativa Centro Universal de
Informática-
CUINF](http://200.121.68.210/SPI_Jurisprudencia/documentos/1-45/2005/20060000575.pdf)

[Time Warner Entertainment Company, LP and Others Vs. Rosario Del Pilar
and
Others](http://200.121.68.210/SPI_Jurisprudencia/documentos/1-45/2005/20060000575.pdf)

## 

**Frequently Asked Questions**

**Q: Does a U.S. copyright holder receive copyright protection within
Peru?**

A: Peru and the U.S. have both signed various international copyright
treaties and have pledged to protect copyrights within their
territories. These copyrights begin at the creation of the work. Peru
also has an optional registration process that may aid a copyright
holder in any subsequent enforcement actions.

**Q: How long does copyright protection last in Peru?**

A: Copyright protection lasts 70 years in the case of collective authors
or the life of the author plus 70 years in the case of an individual
author.

Q: Where should a copyright holder file a complaint alleging copyright
infringement?

A: Once a company suspects infringement, they should file an
infringement action with INDECOPI. After receiving a successful judgment
from INDECOPI, they may then seek damages within the Peruvian judiciary.

**Q: What administrative remedies may be imposed against the
infringer?**

A: INDECOPI may levy a fine (*multa*) up to 150 UIT upon the infringing
party. The severity of this fine depends upon the level of infringement,
the nature of the cooperation by the infringer during the proceedings,
previous history of the defendant, and the general precedent of previous
fines. INDECOPI uses these fines as a means to dissuade future
infractions from the infringing party and unrelated third parties. These
fines rarely surpass 10 UIT. In the case of copyrights, INDECOPI may
order that the infringer pay compensatory damages to the copyright
holder. INDECOPI may also cease and destroy any infringing products and
the equipment used in their manufacture.

**Q: What are the minimum and maximum criminal punishments?**

A: If found guilty within the legal system, Peruvian criminal law allows
the judiciary to impose imprisonment (between 2-8 years) and/or
indemnification fines (between 30-120 an average day's wages) upon the
infringer. The judiciary bases these fines upon the seriousness, and
frequency of the infringing action. Unfortunately, the judiciary always
suspends the imprisonment sentences of guilty infringers. Currently, no
copyright infringers have served any jail time. The guilty party must
also agree not to work in the same field that the infringement occurred
for one year after they finish their incarceration.

# Chapter 4: Trademarks

This section covers:

-   Introduction

-   Historical Legislation

-   Domestic Legislation and Treaties

-   Coverage- What Can be Registered Under Peruvian Trademark Law?

-   Coverage- What Cannot Be Registered Under Peruvian Trademark Law?

-   Trademark Registration Process

-   Market Entry Planning

-   Enforcement Approaches- How to address Infringement?

-   Types of Actions Against Infringers

    -   Administrative Action

    -   Legal Action

-   Peruvian Customs

-   Anti-Counterfeiting Campaigns

-   Other Sources of Information

# 

## Introduction

Peru has a \"first-to file\" system that requires no evidence of prior
use or ownership, leaving registration of popular foreign marks open to
third parties. U.S. firms seeking to distribute their products in Peru
are advised to register their marks, logos, and/or translations with the
Office of Distinct Signs (*la Oficina de Signos Distintivos*) at
INDECOPI. . Many companies register Spanish language translations and
Internet domains \[Question: are domain names registrable as trademarks
in Peru? In the U.S., a domain name would also have to function as a
trademark to be registered.\] Related to the trademark with this office
as an extra precaution. The Office of Distinct Signs controls the
registration process as well as opposition, cancellation, nullification,
and protection of trademarks. The office is regulated by the Industrial
Property Law 823, the Andean Community Decision 486, the Paris
Convention for the Protection of Intellectual Property, and the Law
concerning the functions of INDECOPI.

*For additional information, please see the [Ask the
Experts](#other-sources-of-information-1) section below.*

## Historical Legislation

Spain's colonial occupation of Peru brought with it the idea of private
property, and the protection of this property with marks through
branding. For example, when necessary sheep, horses, llamas, and pigs
were all branded. The first law specific to trademarks came in 1892 with
the Law of Trademarks. Under this law, trademark holders could register
a variety of distinct signs and symbols including names, emblems, and
drawings. While the original registration lasted for only 10 years, the
trademark holder could renew the protection indefinitely. This law also
established fines (between 25-500 soles) and jail sentences (between 40
days and 6 months) for trademark infractions.

Peru's original trademark law was modified in 1959 with the passage of
the Industrial Promotion Law No. 13270 (*Ley de Promoción Industrial No
13270*). This new law created the Industrial Register and the Industrial
Newspaper. It also began to protect company slogans, and set forth rules
regarding the combat of unfair competition and false origins.

It has been updated many times since with its most recent modifications
coming with the passage of the Legislative Decree 823- Industrial
Property Law in 1996 and the Andean Community Decision 486 in 2000. To
comply with the U.S.-Peru Trade Promotion Agreement, (USPTPA), Peru will
further need to further modify its trademark protection, by ratifying or
acceding to the Trademark Law Treaty of 1994. Peru is also required to
make a reasonable effort to pass the Protocol Relating to the Madrid
Agreement Concerning the International Registration of Marks of 1989.

## Domestic Legislation and Treaties

[Legislative Decree 823- Industrial Property
Law](http://www.wipo.int/clea/docs_new/pdf/en/pe/pe008en.pdf) (*Decreto
Legislativo 823- ley de propiedad industrial*) (April 1996)

[Andean Community Decision 291-Common Treatment of Foreign Capital and
Trademarks, Patents, Licenses, y
Privileges](http://www.wipo.int/clea/docs_new/pdf/en/ac/ac002en.pdf)
(*Decisión 291- Régimen Común de Tratamiento a los Capitales Extranjeros
y sobre Marcas, Patentes, Licencias y Regalías*.) (March 1991)

Andean Community Decision 351

[Andean Community Decision
486](http://www.wipo.int/clea/docs_new/pdf/en/ac/ac005en.pdf)- Common
Regimen Concerning Industrial Property (*Decisión 486- Régimen Común
sobre Propiedad Industrial*).

Peru is a member of the following trademark related treaties:

-   [Paris Convention For the Protection of Intellectual
    Property](http://www.wipo.int/treaties/en/ip/paris/pdf/trtdocs_wo020.pdf)

-   [Trade Related Aspects of Intellectual Property
    (TRIPS)](http://www.wto.org/english/tratop_e/trips_e/trips_e.htm)

-   [World Intellectual Property Organization
    Convention](http://www.wipo.int/treaties/en/convention/pdf/trtdocs_wo029.pdf)

Peru is not part of the following trademark related treaties:

-   [Madrid Agreement Concerning the International Registration of
    Marks](http://www.wipo.int/madrid/en/legal_texts/pdf/madrid_agreement.pdf)

-   [Protocol Relating to the Madrid Agreement Concerning the
    International Registration of
    Marks](http://www.wipo.int/madrid/en/legal_texts/pdf/madrid_protocol.pdf)

-   [Trademark Law
    Treaty](http://www.wipo.int/treaties/en/ip/tlt/pdf/trtdocs_wo027.pdf)

-   [Nice Agreement Concerning the International Classification of Goods
    and Services for the Purposes of the Registration of
    Marks](http://www.wipo.int/treaties/en/classification/nice/pdf/trtdocs_wo019.pdf)

-   [Singapore Treaty on the Law of
    Trademarks](http://www.wipo.int/edocs/mdocs/mdocs/en/tlt_r_dc/tlt_r_dc_30.pdf)

While Peru is not a formal signatory to the Nice Agreement, its
membership in the Andean Community requires it to recognize and follow
the Nice Agreement principles concerning the classification of
trademarks. With the passage of the USPTPA, Peru has also agreed to
ratify or accede to the Trademark Law Treaty by January 1, 2008. Also,
due to this treaty, Peru has agreed to make all reasonable efforts to
ratify or accede to the Protocol Relating to the Madrid Agreement
Concerning the International Registration of Marks.

## Coverage- What Can be Registered Under Peruvian Trademark Law?

According to Andean Community Decision 486, a trademark can cover the
following:

-   Words or a combination of words;

-   Pictures, figures, symbols, graphic elements, logotypes, monograms,
    portraits, labels, and emblems;

-   Sounds and smells;

-   Letters and numbers;

-   A color demarcated to give it a specific shape, or a combination of
    colors;

-   The shape of a product its packaging or wrappings;

-   Any combination of the signs or means indicated in the items above.

**Source**: Andean Community Decision 486, Article 134

A mark is eligible for trademark registration if it is distinctive and
easily distinguishable, and does not conflict with prior rights of third
parties.

One can register four types of trademarks in Peru: A Trade Name (*Nombre
Comercial*), an Advertising Slogan (*Lema Comercial*), a Collective Mark
(*Marca Colectiva*), or a Certification Mark (*Marca de Certificación*).
These trademarks are initially registered for ten-year periods and may
be renewed for subsequent ten-year periods.

**Trade Names** (*Nombre Comercial*) are marks that distinguish the good
or service and indicate the origin of the good or service. These trade
names are typically separated into product trademarks and service
trademarks.

**Advertising Slogan** (*Lema Comercial*) are words, phrases, or
captions that complement a protected trademark. The applicant needs to
specify which trademark the slogan is associated with. When a trademark
is sold, these advertising slogans are also transferred to the buyer.

**Collective Marks** (*Marca Colectiva*) are symbols owned by an
association and indicate the membership in that group. The applicant
needs to state conditions in which the trademark will be used.

**Certification Marks** (*Marca de Certificación*) are symbols that
certify that a good or service meets certain standards of quality,
origin, materials used, or features.

**Source**: Andean Community Decision 486, Article 175-179; Art 180-184;
185-189; 190-199

## Coverage- What Cannot Be Registered under Peruvian Trademark Law?

Peruvian law prohibits a wide variety of symbols and signs from being
registered as trademarks.

The following symbols and signs cannot be registered as trademarks.
Symbols that:

-   Are lacking in distinguishable characteristics

-   Consist entirely of everyday shapes or packing or consist
    exclusively of shapes that attribute a functional or technical
    advantage of the product.

-   Consist of a sign that has become the common, everyday designation
    or technical designation for the good

-   Consist of a color without borders

-   Create confusion as to the national or geographical origin, nature,
    manufacturing methods, characteristics, or qualities of the goods

-   Contain a protected name for wines and spirits

-   Imitate heraldic elements such as coats of arms, flags, emblems, and
    official government signs and stamps.

-   Imitate a protected plant species.

-   Are deemed against the law, morality, public order or good manners

**Source**: Andean Community Decision 486, Article 135

Moreover, Peruvian law also prevents trademark protection of signs that
may negatively affect the rights of third parties. It is prohibited to
register signs that create confusion and that:

-   Are identical or similar to a trademark filed or registered earlier
    by a third party

-   Are identical to a protected name, label, emblem, or advertising
    slogan.

-   Affect the identity or prestige of legal entities

-   Violate intellectual or copyright protection

-   Consist of the name of indigenous, African American or local
    communities without their consent.

-   May contribute to unfair competition

**Source**: Andean Community Decision 486, Article 136, 137

## Trademark Registration Process

**Step 1: Obtain Qualified Counsel**

Before seeking trademark protection, one should seek qualified legal
counsel in Peru. Trademark applications include complicated aspects such
as: understanding the short and long-term costs of registration and
Peruvian specific trademark issues, conducting a search to ensure that
the trademark has not previously been registered, ensuring that one
applies for protection in the appropriate class (es), understanding
application materials including legal jargon, corresponding with
INDECOPI, making any necessary amendments to the original application,
and monitoring the sector for potential infringements. Moreover, this
complexity increases as one often finds it necessary to seek trademark
protection in multiple countries simultaneously because any disclosure
in one country may result in a loss of trademark registration in
another. A qualified trademark attorney will be able to counsel one or
direct one to overseas counsel to assist with these matters.

**Step 2: Determine Whether the Mark is Eligible for Registration**

A trademark agent will help one understand if their trademark is
eligible for registration. For example, applications with generic or
descriptive terms, marks that may be deceptive or considered immoral, or
marks bearing national symbols such as flags may be rejected. For
further information, see "Coverage..." for what can and cannot be
covered. Also, before filing trademark application, one should conduct a
search (*Búsqueda de Antecedentes*) to determine if their mark or a
close variation has been registered.

**Step 3: Perform a Pre-Application Trademark Search**

The Department of Commerce recommends that an applicant undertake a
preliminary trademark search to ensure that there are no conflicting
prior registrations. The Office of Distinct Signs (hereafter Trademark
Office) offers this service (*el Servicio de Búsqueda de Antecedentes*).
To undertake this search, one needs to pay INDECOPI 1.25% of the UIT and
submit a search request. If one wants to search more than one class,
there is an additional fee per class. With the request, one must submit
information about the proposed trademark and the classes to be searched.
This search may take minutes or days, depending upon the type of search
(phonetic or drawing) undertaken.

**Step 4: Prepare the Required Paperwork**

This application includes details such as:

-   The name, address, telephone number, national identity number, and
    the nationality of the applicant

-   The name, address, telephone number, and the national identity
    number of the legal representative

-   Description and reproduction of the trademark, and economic
    activities covered by the trademark. If the trademark is a drawing,
    one should attach 5 (5 X 5 cm) reproductions of the original sign.

If one has registered the trademark previously outside of Peru, one
should indicate the previous registration number, date, and country of
registration. One should also include certified copies of these previous
foreign registrations.

**Step 5: Select the Number of Classes\
**

Peru uses the International Trademark Classification System (commonly
known as the Nice System for classification for marks). Under this
international system, Peru categorizes goods and services into 45
classes, with 34 classes for goods and 11 classes for services. A
trademark must be registered in connection with at least one particular
class of goods or services. However, if one intends to sell a product in
other classes in the future, one should register the mark to reflect
this intention.

**Step 6: Application for Priority Registration under an International
Agreement**

If an applicant has recently applied for registration of their trademark
under the Paris Convention, they may file a letter of priority along
with a photocopy of the first application and attach it to the
application form. As part of the USPTPA, Peru has also agreed to make a
reasonable effort to pass the Protocol Relating to the Madrid Agreement
Concerning the International Registration of Marks of 1989. With
ascension to the Madrid Protocol, applicants may file one international
application in one language and seek an international registration for
trademark protection in all member states.

**Step 7: Submit the Application**

In Peru, the Trademark Office grants the registration of trademarks. To
officially begin the trademark registration process, the applicant must
pay 13.70% of the UIT at the Trademark Office.[^5] After paying the
application fee, the applicant presents an official application to
INDECOPI.

**Step 8: Review by the Office of Distinct Signs (Trademark Office)**

The Trademark Office will undertake a preliminary review of the
application materials. Fifteen working days after paying the application
fee and submitting the document, the applicant will receive an approval
or rejection of their initial application. This approval merely
indicates that the applicant is moving forward in the application
process and that this application complies with articles 135 and 136 of
the Andean Community Decision 486. In the case of rejection, INDECOPI
may request that the applicant correct or modify their application to
comply with Articles 135 and 136. If after 60 days, the application
still does not meet the requirements, it shall be rejected by the
Trademark Office and shall lose its priority position.

**Step 9: Publication and Opposition**

Within three months of the acceptance of the initial application, the
applicant must go to the office of the newspaper *El Peruano*, and
request the publication of their trademark application. If they fail to
publish their application within this period, the Trademark Office will
consider their application abandoned.

If their trademark application consists of a logotype, or packaging, one
should include a miniature depiction (3 cm X 3 cm).

Within thirty working days of this publication, third parties with a
legitimate interest may file an objection for the invalidation of the
trademark registration. This objection must include:

-   A description of the trademark application in question

-   Supporting evidence for the opposition

This objection costs 9.70% of the UIT.

To support this opposition, the third party may submit evidence of
similar trademark applications filed within the Andean Community. After
the Trademark Office issues its notification of the resolution, either
party may file a Motion for Reconsideration (*Recurso de
reconsideración*) or a Motion for Appeal (*Recurso de Apelación y/o
Adhesión*) at the Trademark Office. The Motion for Reconsideration costs
10% of the UIT and must be filed within 15 days of the official
notification of the decision. The appeal, costing 14.00% of the UIT,
must be filed with the Trademark Office within 15 working days. The
appeal will be heard by INDECOPI's Intellectual Property Court (*La Sala
de Propiedad Intelectual del Tribunal)*.

**Step 10: Notification of Resolution\
**

If no party files an opposition to the mark, the Trademark Office may
grant or reject the trademark registration. It will send a notification
to the applicant at this time. If the application is not successful, the
applicant may again file a Motion for Reconsideration or a Motion for
Appeal at the Head of the Office of Distinct Signs. The Motion for
Reconsideration costs 10% of the UIT and must be filed within 15 days of
the official notification of the decision. The appeal, costing 14.00% of
the UIT, must be also filed with the Trademark Office within 15 working
days. The appeal will be heard by INDECOPI's Intellectual Property
Court.

**Source**: Andean Community Decision 486, Article 147; Legislative
Degree 823

**Step 11: Renewal**

  -----------------------------------------------------------------------
  A trademark registration lasts for ten years, but is subject to
  cancellation for lack of use if not used within 3 consecutive years. To
  renew the trademark, one needs to pay 12.5% of the UIT and submit a
  renewal application at the offices of INDECOPI. The applicant can
  submit this renewal application up to six months prior to the
  expiration. Furthermore, while ideal to file application renewal at the
  ten-year mark, INDECOPI grants the applicant a 6 months grace period to
  file the renewal. After these additional 6 months, the trademark is
  considered abandoned and the trademark holder no longer has the ability
  to protect this mark. Following the renewal application submission,
  INDECOPI will evaluate the application and give their decision within
  30 working days. After the notification, one can present a Motion for
  Reconsideration a Motion for an Appeal (costing 9% of the UIT) within
  15 working days of INDECOPI's notification.

  -----------------------------------------------------------------------

![](media/image2.wmf){width="6.198611111111111in" height="8.96875in"}

## Market Entry Planning

Before entering the Peruvian market, a company should conduct an audit
of their intellectual property. In this audit, the company will gather
internal company material such as business plans, publications,
strategies, and technical publications. This audit will assist the firm
in the developing of their trademark strategy as well as their
international intellectual property strategy.

The company should also research the legal and regulatory environment
well in advance of their market entry of Peru. During this research, the
firm can uncover any discrepancies between the stated laws and the
actual enforcement of these laws in Peru. It may also uncover potential
products that will likely infringe upon the trademark. Trade
associations, industry groups, lawyers, security experts, and other
companies can help one in uncovering the real market from the
theoretical. Moreover, the company should be aware of how Peru's
intellectual property statutes differ from the United States'. The
company should continue to monitor the intellectual property situation
while conducting business in Peru. For example, the company may hire a
trademark agent to monitor publications of trademark applications in El
Peruano. This monitoring will allow them to potentially oppose
applications before they become officially licensed.

Ultimately, the company should take a protective and preventive stance
to prevent any unauthorized use of their intellectual property. Use
every legal means available to prevent the possibility of trademark
infringement. Consider registering your trademark as part of an
international strategy, including Peru and many of Peru's trading
partners. By registering early, the company may be able to prevent
competitors from indirectly infringing upon their trademark in Peru. To
protect their trademark once an infringement occurs, the company will
have to invest considerable resources such as time and money to address
the infringement through INDECOPI's lengthy administrative process and
the overwhelmed Peruvian court system.

**Protection**

If you discover that your trademark is being infringed, do something
immediately to protect and enforce your rights. Investigations, raids,
seizures and well as civil litigation and criminal prosecutions are some
of the tools available. Before deciding which tools to use, however, ask
yourself the following preliminary questions:

-   Is the trademark registered or otherwise capable of being protected
    in Peru?

-   Is the harm in Peru or overseas?

-   What is the source of the harm? Competitors? Employees, agents or
    contractors?

*See the section on Enforcement.*

#  

## Enforcement Approaches- How to Address Infringement

According to the rights of trademark, the trademark holder may bring
forth legal action with INDECOPI against those persons that are
infringing upon or damaging their trademark rights.

Types of Actions Against Infringers:

The trademark holder may request that INDECOPI order the infringing
party to:

-   Stop all violations of the trademark, including:

    -   Withdrawing all products and packaging related to the
        infringement

    -   Destroying the products and related materials

    -   Agreeing not to export or import the products or related
        materials.

Compensating the owner for damages

**Administrative Action**

INDECOPI offers several administrative options for trademark holders who
suspect infringement of their goods. These options include: an
infringement action (*denuncia*), a nullification action (*nulidad de
registros*), an inspective visit (*visita inspectiva*), a restraining
order (*medida cautelar*), and a cancellation action (*cancelación de
registros*) with the Trademark Office.

Depending upon the type of action requested, these motions cost between
5-15% of the UIT. These motions should also include relevant details
such as:

-   The identification number of the trademark holder and their attorney

-   A description of the trademark being infringed upon

-   A description of the alleged infringement including details such as
    the infringing party's name, business identification number,
    business name, business address, location and methods of the
    infringing activity, and all other relevant details.

After conducting an investigation, the Trademark Office will rule on the
merit of the motions by issuing a notification, and if necessary enact
these motions within 30 business days. Either party involved has the
right to appeal the Trademark Office's decision. This appeal must be
filed with INDECOPI's Intellectual Property Court within 5 days of this
notification and costs 14% of the UIT.

If INDECOPI rules infringement has occurred, it will levy a fine
(*multa*) up to 150 UIT upon the infringing party. The severity of this
fine depends upon the level of infringement, the nature of the
cooperation by the infringer during the proceedings, and precedent of
previous fines. The original trademark holder does not receive
compensation from these fines. Instead, INDECOPI uses the fines as a
means to dissuade future infractions from the infringing party and
unrelated third parties

**Source**: Legislative Decree 823

**Legal Action**

If a trademark holder receives a favorable ruling in their motions, they
may choose to bring forth further legal action in the Peruvian court
system. If one is found guilty within the legal system, Peruvian
criminal law allows the judiciary to impose imprisonment (between 2-8
years) and/or indemnification fines (between 30-120 an average day's
wages) upon the infringer. The judiciary bases these fines upon the
seriousness, and frequency of the infringing action. Unfortunately, the
judiciary in Peru always suspends the imprisonment sentences of guilty
infringers. Currently, no trademark infringers have served any jail time
in Peru. The guilty party must also agree not to work in the same field
that the infringement occurred for one year after they finish their
incarceration.

**Source**: Legislative Degree 823, Law 28289

## Peruvian Customs

When trademark holders have suspicions of possible infringement, they
may present the Peruvian customs authority (SUNAT) with detailed
information as to the alleged infringement. If the customs authority
agrees with their suspicions, the trademark holder may request that
Peruvian customs prevent any further importation or exportation of the
infringing good. The customs authority will then allow the trademark
holders the opportunity to participate in the inspection of the
infringing goods. The original importer or exporter of the goods shall
be given the same opportunity. While Peruvian customs has 48 hours to
enforce this inspection, frequently they will wait until the importers
of the suspect container pay the customs duties. In many cases, the
importer will simply not claim the suspect container, nor pay for its
customs clearance. Thus the containers sit in Peruvian customs
indefinitely without the trademark holder nor the Trademark Office being
able to determine the legitimacy of the suspect goods.

If a customs inspection is realized, the customs authority may still
rule against the trademark holder's motions. In this case, the customs
authority orders a temporary suspension and then notifies both parties
of its decision. The trademark holder has 10 business days to dispute
this ruling through an initiation of infringement proceedings. If the
trademark holder fails to act, this temporary suspension shall be lifted
and the goods will be released.

**Source**: Andean Community Decision 486: Articles 250, 251, 252, 253,
254.

## 

## Other Sources of Information

**Ask the Experts**

***Disclaimer:** Inclusion of material in this IPR Toolkit does not
constitute legal advice and is not a substitute for advice of legal
counsel and is subject to change according to the laws of Peru. The
United States Government will strive to update and improve this IPR
Toolkit as information becomes available and as U.S. government
resources allow. Additionally, the U.S. Government, the U.S. Department
of Commerce, its employees, and its contractors, assume no legal
liability for the accuracy or, completeness, or usefulness of any
information, resource, or process contained disclosed herein.*

***Links to External Web Sites:** Links to web sites outside the U.S.
Federal Government or the use of trade, firm, or corporation names
within the U.S. Department of Commerce web sites are provided for the
convenience of the user. Such links or use does not constitute an
official endorsement or approval by the U.S. Government of any private
sector web site, product, or service.*

**General Intellectual Property Links**

[Making a Mark: An Introduction to Trademarks for Small and Medium-sized
Enterprises](http://www.wipo.int/freepublications/en/sme/900/wipo_pub_900.pdf)

[WIPO Intellectual Property Digital
Library](http://www.wipo.int/ipdl/en/)

**INDECOPI Forms and Documents**

[Application for Registration of a Trademark
Name](http://200.121.68.202/portalIndecopiWebApp/ArchivosPortal/estatico/formatos/osd/OSD-RNC.doc)

[Application for the Registration of an Advertising
Slogan](http://200.121.68.202/portalIndecopiWebApp/ArchivosPortal/estatico/formatos/osd/OSD-RLC.doc)

[Application for the Registration of a Product
Trademark](http://200.121.68.202/portalIndecopiWebApp/ArchivosPortal/estatico/formatos/osd/OSD-RMP.doc)

[Application for the Registration of a Service
Trademark](http://200.121.68.202/portalIndecopiWebApp/ArchivosPortal/estatico/formatos/osd/OSD-RMS.doc)

[Application of the Modification of a
Registration](http://200.121.68.202/portalIndecopiWebApp/ArchivosPortal/estatico/formatos/osd/OSD-RMS.doc)

[International Classification of Products and
Services](http://200.121.68.202/portalIndecopiWebApp/ArchivosPortal/estatico/formatos/osd/Clasificacion Internacional de Productos y Servicios.pdf)

**Legislation**

[Peruvian IP
Legislation](http://www.wipo.int/clea/en/clea_tree1.jsp?expand=PE#PE)

[Legislative Decree 823- Industrial Property
Law](http://www.wipo.int/clea/docs_new/pdf/en/pe/pe008en.pdf) (Decreto
Legislativo 823- Ley de Propiedad Industrial) (April 1996)

[Andean Community Decision 486- Common Regimen Concerning Industrial
Property](http://www.wipo.int/clea/docs_new/pdf/en/ac/ac005en.pdf)
(Decisión 486- Régimen Común sobre Propiedad Industrial)(December 2000)

[Paris Convention for the Protection of Intellectual
Property](http://www.wipo.int/treaties/en/ip/paris/pdf/trtdocs_wo020.pdf)
(Convenio de París para la protección de la propiedad industrial) (March
1883)

[Law Concerning the Organization and Functions of the National Institute
for the Defense of Competition and the Protection of Intellectual
Property](http://www.wipo.int/clea/docs_new/pdf/es/pe/pe009es.pdf). (Law
25868)- (Decreto Ley 25868- Ley de Organización y Funciones del
Instituto Nacional de defensa de la competencia y de la protección de la
propiedad intelectual- indecopi. ) (November 1992)

**Recent Trademark Cases Involving U.S. Firms**

[The Coca Cola Company vs. La Unión de Cervecerías Peruanas and Backus y
Johnston
S.A.A.](http://200.121.68.210/SPI_Jurisprudencia/documentos/1-45/2006/20060000623.pdf)

[Carlos Saba Bulos vs. Deere &
Company](http://200.121.68.210/SPI_Jurisprudencia/documentos/1-45/2006/20060000834.pdf)

[The Gillete Company vs. Importaciones Fercar E.I.R.L and Sofia Trading
Import & Export
S.A.C.](http://200.121.68.210/SPI_Jurisprudencia/documentos/1-45/2006/20060000806.pdf)

[Drogueria Britania S.A. vs. The Procter & Gamble
Company](http://200.121.68.210/SPI_Jurisprudencia/documentos/1-45/2006/20060000159.pdf)

[Eli Lilly and Company vs. Micro Labs,
Ltd.](http://200.121.68.210/SPI_Jurisprudencia/documentos/1-45/2006/20060000625.pdf)

[The Coca- Cola Company vs. Renato Antonio Tupayachi
Rodríguez](http://200.121.68.210/SPI_Jurisprudencia/documentos/1-45/2006/20060000245.pdf)

[Kellogg Company vs. Amay Commercial
Inc.](http://200.121.68.210/SPI_Jurisprudencia/documentos/1-45/2006/20060000097.pdf)

**Frequently Asked Questions**

**Q: Does Peru protect well-known trademarks?**

A: Peruvian Legislative Decree 823 and the Andean Community Decision 486
prevent the registration and/or the unauthorized use of well-known marks
by unrelated third parties. According to this legislation, INDECOPI
takes into account several factors concerning well-known marks
including: the degree to which it is known in the relevant sector, the
duration, extent, and geographical scope of its use and publicity,
sales, and the amount of marketing investments**.**

**Q: What is the duration of trademark protection in Peru?**\
A: Like most other countries, the initial term of trademark protection
lasts 10 years. This term can be extended indefinitely.

**Q: Where should a trademark holder file a complaint alleging trademark
infringement?**\
A: After hiring local counsel, the trademark holder should file an
infringement action with INDECOPI. See Enforcement for more information.

**Q: What administrative corrective measures may be imposed against the
infringer by INDECOPI?**

A: INDECOPI may levy a fine (*multa*) up to 150 UIT upon the infringing
party. The severity of this fine depends upon the level of infringement,
the nature of the cooperation by the infringer during the proceedings,
previous history of the defendant, and the general precedent of previous
fines. INDECOPI uses these fines as a means to dissuade future
infractions from the infringing party and unrelated third parties. These
fines rarely surpass 10 UIT. In the case of trademarks, INDECOPI may not
order that the infringer pay compensatory damages to the trademark
holder. If the trademark holder seeks damages, they must bring suit
within the Peruvian judiciary. INDECOPI may also cease and destroy any
infringing products and the equipment used in their manufacture.

**Q: What are the minimum and maximum criminal punishments?**\
A: If found guilty within the legal system, Peruvian criminal law allows
the judiciary to impose imprisonment (between 2-8 years) and/or
indemnification fines (between 30-120 an average day's wages) upon the
infringer. The judiciary bases these fines upon the seriousness, and
frequency of the infringing action. Unfortunately, the judiciary always
suspends the imprisonment sentences of guilty infringers. Currently, no
trademark infringers have served any jail time. The guilty party must
also agree not to work in the same field that the infringement occurred
for one year after they finish their incarceration.

# Chapter 5: Patents

# 

This section covers:

-   Introduction

-   Historical Legislation

-   Domestic Legislation and Treaties

-   Coverage- What Can be Patented Under Peruvian Patent Law

-   Coverage- What Cannot be Patented Under Peruvian Law?

-   Patent Registration Process

-   Market Entry Planning

-   Enforcement Approaches- How to address Infringement?

-   Actions Against Infringers

    -   Administrative Action

    -   Legal Action

-   Peruvian Customs

-   Other Sources of Information

## Introduction

As with other intellectual property rights, the protection of patents
and the patent holder depends upon the laws on where the economic
activity occurs. For example, a United States patent protects the patent
holder only within the United States. This patent holder cannot seek
U.S. government protection of their patent in a different country where
infringement is occurring. Obtaining patent protection in foreign
jurisdictions is the responsibility of the inventor. As Peru is not yet
a signatory to the Patent Cooperation Treaty, a domestic patent
application must be filed in Peru with the Patent Office (*la Oficina de
Invenciones y Nuevas Tecnologías*) within INDECOPI in order to obtain
patent protection. If a patent holder suspects infringement, they may
first file an infringement action with INDECOPI, and if successful later
seek damages within the Peruvian judiciary.

For additional information, please see the [Ask the
Experts](#_Ask_the_Experts) section below.

## Historical Legislation

In Peru, the first recognized instances of the registration and
protection of inventions came during the occupation by Spain. After its
subsequent independence, Peru continued to recognize certain forms of
patents and passed its first patented related law in 1869. This law,
named the law of privileges (*Ley de Privilegios*), gave the inventor
the right to exploit his/her invention for ten years. This law was
modified in 1896, centralizing the administration functions in the
Ministry of Industry and establishing formal requirements for the
application.

In 1959, Peru again modified its intellectual property laws, with the
passage of Law No. 13270. This law created the National Institute of
Technical Norms and Certification (*Instituto Nacional de Normas
Técnicas y Certificación* (INANTIC)) and established rules for
conducting examination of the patent application. This law also allowed
the patent holder to extend the patent's length for five more years
(beyond the original ten). INANTIC was later replaced by the National
Institute of Technological Investigation and Technical Norms (*Instituto
Nacional de Investigación Tecnológica y Normas Técnicas* (ITINTEC)) with
the passage of the General Industry Law No. 18350 and subsequent
legislation of 19262 and 19565.

In 1992, Peru passed Law No. 26017 or the General Law of Industrial
Property. This law expanded the scope of intellectual property control
and replaced ITINTEC with a new organization called INDECOPI. This law
also created the Office of Distinct Signs (for trademark protection),
the Patent Office (for patent protection), and the Court for the Defense
of Competition and Intellectual property. In 1996, Peru repealed Law No.
26017 with the goal of unifying its national laws with that of the
Andean Community and incorporating international standards (such as the
Paris Convention and the GATT accord).

**Source**:

## Domestic Legislation and Treaties:

[Legislative Decree 823- Industrial Property
Law](http://www.wipo.int/clea/docs_new/pdf/en/pe/pe008en.pdf) (*Decreto
Legislativo 823- ley de propiedad industrial*) (April 1996)

[Andean Community Decision 291-Common Treatment of Foreign Capital and
Trademarks, Patents, Licenses, y
Privileges](http://www.wipo.int/clea/docs_new/pdf/en/ac/ac002en.pdf)
(*Decisión 291- Régimen Común de Tratamiento a los Capitales Extranjeros
y sobre Marcas, Patentes, Licencias y Regalías*.) (March 1991)

[Andean Community Decision
344](http://www.wipo.int/clea/docs_new/pdf/en/ac/ac006en.pdf) Common
Protection of the rights of different Vegetable Varieties (*Decisión
345- Régimen Común de Protección a los derechos de los Obtentores de
Variedades Vegetales*)

[Andean Community Decision
486](http://www.wipo.int/clea/docs_new/pdf/en/ac/ac005en.pdf)- Common
Regimen Concerning Industrial Property (*Decisión 486- Régimen Común
sobre Propiedad Industrial*).

Peru is a member and/or has ratified the following agreements:

-   [World Intellectual Property Organization (WIPO)
    Convention](http://www.wipo.int/treaties/en/convention/pdf/trtdocs_wo029.pdf)
    (Since September 1980).

-   [Paris Convention (Industrial
    Property),](http://www.wipo.int/treaties/en/ip/paris/pdf/trtdocs_wo020.pdf)
    (Since April 1995)

-   [World Trade Organization (WTO)](http://www.wto.org/) (Since January
    1995)

-   [Trade Related Aspects of Intellectual Property
    (TRIPS)](http://www.wto.org/english/tratop_e/trips_e/trips_e.htm)
    (Since January 1995).

Peru is not part of the following patent related treaties:

-   [Budapest Treaty on the International Recognition of the Deposit of
    Microorganisms for the Purposes of Patent
    Procedure](http://www.wipo.int/treaties/en/registration/budapest/pdf/trtdocs_wo002.pdf)
    (1977), as amended in 1980;

-   [Patent Law
    Treaty](http://www.wipo.int/treaties/en/ip/plt/pdf/trtdocs_wo038.pdf)
    (2000)

-   [Patent Cooperation
    Treaty](http://www.wipo.int/pct/en/texts/articles/atoc.htm) (1970),
    as amended in 1979

-   [Hague System for the International Registration of Industrial
    Designs](http://www.wipo.int/hague/en/legal_texts/)

With the passage of the U.S.-Peru Trade Promotion Agreement (USPTPA),
Peru has agreed to ratify or accede to the Budapest Treaty on the
International Recognition of the Deposit of Microorganisms for the
Purposes of Patent Procedure. It has also agreed to ratify or accede to
the Patent Cooperation Treaty by January 1, 2008. Also, due to the
USPTPA, Peru has agreed to make all reasonable efforts to ratify or
accede to the Patent Law Treaty and the Hague System for the
International Registration of Industrial Designs.

For additional information, please see the [Ask the
Experts](#_Ask_the_Experts) section below.

## Coverage- What Can be Patented Under Peruvian Patent Law?

In Peru, patents are granted for inventions, whether they are goods or
processes. These inventions must be "new, involve an inventive step, and
be industrially applicable." To be considered "new," an invention must
not have been previously made available and in the public domain. To be
considered "inventive," the good or process must not be obvious to those
persons familiar with the technical field. Finally, to be considered
"industrially applicable," the product or service must be able to be
produced within industry.

Peruvian law offers three forms of patent protection- invention patents
(*patente de invención*), utility models (*modelo de utilidad*), and
industrial design patents (*diseño industrial*). First, an invention
patent (similar to the U.S. utility patent) has a term of 20 years from
the date of application. Second, both utility model patents and
industrial design patents have terms of 10 years from the date of
application.

## Coverage- What Cannot be Patented Under Peruvian Law?

According to Peruvian Law, the following works do not qualify for patent
protection:

-   Discoveries, scientific theories, and mathematical methods;

-   Any living thing, either complete or partial, as found in nature,
    natural biological processes, and biological material, as existing
    in nature, or able to be separated, including the genome or germ
    plasm of any living thing;

-   Literary and artistic works or any other aesthetic creation
    protected by copyright;

-   Plans, rules, and methods for the pursuit of intellectual
    activities, playing of games, or economic and business activities;

-   Computer programs and software, as such; and,

-   Methods for presenting information

**Source**: (Andean Community Decision 486: Article 15)

## Patent Registration Process 

**Step 1: Obtain Qualified Counsel**

Before seeking patent protection, one should seek qualified legal
counsel in Peru. Patent applications and registrations include
complicated aspects including: making a prior art search, writing
descriptive claims in legal jargon, corresponding with the Office of
Inventions and New Technologies (hereafter Patent Office), making any
necessary amendments to the original application, and monitoring the
sector for potential infringements. Moreover, this complexity increases
as one often finds it necessary to seek patent protection in multiple
countries simultaneously because any disclosure in one country may
result in a loss of patentability in another. A qualified patent
attorney will be able to counsel one or direct one to overseas counsel
to assist with these matters.

**Step 2: Determine whether you have a Priority Claim**

As a member of the Paris Convention, Peru honors the "right of priority"
(*Reivindicación de Prioridad*) for applications filed in other member
countries. For instance, if one filed a patent application outside of
Peru, one has twelve months to file the application in Peru. This later
application will be regarded as if it had been filed on the same day as
the original or first application. This right of priority gives the
applicant an extra twelve months to decide in which countries to request
patent protection. To guarantee this right of priority, one should
attach a photocopy of this prior application with the Peruvian
application and should pay 3.64% additional of the UIT (*Unidad
Impositiva Tributaria*) to INDECOPI.[^6]

Step 3: Perform a Prior Art Search (La Búsqueda de Antecedentes)

A preliminary patent search is highly recommended to ensure that there
are no prior conflicting registrations. INDECOPI offers a prior art
search service (*el Servicio de Búsqueda de Antecedentes*.) One submits
this search request with the Patent Office. The cost of the search
varies depending upon the type of patent application. The results of
this search will be available after 10 working days. This search also
helps the applicant to demonstrate the novelty of their invention within
the prior art.

**Step 4: Prepare the Required Paperwork**

Peruvian patent applications are complicated and require substantial
documentation by the application. All applications must be in Spanish
and include:

-   The name, address, and nationality of the applicant

-   The name, address, and nationality of the inventor

-   The name, and address of legal counsel

-   The title and description of the invention

-   Summary of the purpose of the invention

-   Prior Art

-   Relevant Technical Drawings

-   Copy of Prior Patent Filings.

**Step 5: Submit the Initial Application for a Formality Review**

After completing the paperwork, one needs to submit their application
for a formality review with the Patent Office. The cost of a patent
application is 32.50% of the UIT (*Unidad Impositiva Tributaria*). This
cost is broken into two parts. For the formality review, one must pay
only 18% of the UIT. If one's patent application advances to the
physical examination step (Step 8), one will need to pay the remainder
of 14.5% of the UIT. [^7]

**Step 6: Preliminary Examination (*Examen de Forma*)**

The Patent Office will review the patent application within 30 working
days of its filing. If the patent application is incomplete, this office
will notify the applicant and request that they modify the original
application. In this case and if the applicant has not modified their
original petition within two months, the Patent Office will consider it
abandoned. If Patent Office feels that the patent application has merit,
it will send the applicant an Advice Order (*la Orden de Aviso*) and a
summary of the invention for publication.

**Step 7: Publication and Oppositions**

Within 3 months of receiving this Advice Order, the patent applicant
must publish the patent application in the daily newspaper, [*El
Peruano*](http://www.elperuano.com.pe/). The applicant must coordinate
and pay for this publication directly with the offices of *El Peruano*.
Failure to publish their application will result in an abandoned
application.

Within 60 working days of this publication, those parties with a
legitimate interest may file an objection against the patent
registration. This objection must include:

A description of the patent application in question

Supporting evidence for the opposition

This objection costs 7.50% of the UIT. The Patent Office will notify the
original applicant of these objections and may request that the
applicant revise the application and/or present further documents to
support it.

If the person opposing the patent application has previously filed a
similar patent application in another Andean Community country, they may
choose to file a patent application in Peru in support of their
opposition. After the notification of the resolution, either party may
file a Motion for Reconsideration (*Recurso de reconsideración*) or a
Motion for Appeal (*Recurso de Apelación y/o Adhesión*) at the Patent
Office. The Motion for Reconsideration costs 10% of the UIT and must be
filed within 15 days of the official notification of the decision. The
appeal, costing 14.00% of the UIT, must be filed with the Patent Office
within 15 working days. The appeal will be heard by INDECOPI's
Intellectual Property Court (*La Sala de Propiedad Intelectual del
Tribunal del Indecopi*).

**Step 8: Substantive Examination (Examen de Fondo)**

Within six months of an application's publication, the applicant must
pay for the substantive examination of the invention. Failure to pay
will result in an abandoned application. During the substantive
examination, INDECOPI verifies that the application contains a novel
idea, requires a level of inventiveness, and has industrial
applications. During this review, the office reviews the technical data
of the patent application and consults with experts as to the validity
and feasibility of the patent application's claims. If the examiner
requires additional information or clarification, they will contact the
patent applicant.

**Step 9: Granting of Patent Right (*La Concesión de la Patente*)**

After this substantive examination, INDECOPI will either grant and/or
reject the protection of an application's claims. For instance, INDECOPI
may deem some claims valid, while other claims (in the same application)
invalid, and thus without protection.

**Step 10: Rejection and Reexamination**

An applicant dissatisfied with the Patent Office's decision has 15 days
to appeal the decision from the date of the rejection. They may appeal
their decision by filing a Motion for Reconsideration (*Recurso de
Reconsideración*), costing 9% of the UIT, or an Appeal or an (*Recurso
de Apelación y/o Adhesión*), costing 16.21% of the UIT.

**Step 11: Pay Annual Fees (Anualidades)**

To protect patents, one must begin paying annual fees three years after
the initial patent application. These fees cost 6.5% of the UIT. The
patent holder has a six-month grace period to pay these fees. Late
maintenance fees cost 9.75% of the UIT. Failure to pay these annual fees
will result in the patent falling into the public domain and no longer
being protected by INDECOPI. These annual fees are not required for
either utility or industrial design patents.

![](media/image3.wmf){width="6.198611111111111in" height="8.96875in"}

##  Market Entry Planning

Before entering the Peruvian market, a company should conduct an audit
of their intellectual property. In this audit, the company should gather
internal company material such as business plans, publications,
strategies, and technical publications. This audit will assist the
company in developing their patent strategy as well as their overall
international intellectual property strategy. Due to regulations, time
constraints, and registration costs the company may choose to not patent
their invention in the Peruvian market. For example, the company may
choose to keep this knowledge as a trade secret. (See Trade Secret
section). If one considers patenting their invention, they should file
patent applications concurrently in each country they expect to do
business. Peru's expected accession to the PCT will make these
international filings easier.

In addition to applying for the patent, a company should take reasonable
measures to protect their secret information from either accidental or
intentional internal and external disclosure. For example, the company
should utilize non-disclosure agreements in negotiations, presentations,
and contracts with their suppliers, customers, board members, employees,
and contractors. The company should share sensitive information on a
"need to know" basis and restrict the excessive and unnecessary
disclosure of technical data. Similarly, the company should develop
contingency plans for the preservation of this data in the case of
potential man made or natural disasters. This disaster planning will
ensure the continuity and protection of proprietary information.

A company should also research the legal and regulatory environment well
in advance of their market entry of Peru. During this research, the firm
can uncover any discrepancies between the stated laws and the actual
enforcement of these laws in Peru. Trade associations, industry groups,
lawyers, security experts, and other related companies can help the
company in differentiating the actual market conditions from the
theoretical marketplace. Moreover, the company should be aware of how
Peru's intellectual property statutes differ from the United States'.
For example, therapeutic methods can be patented in the U.S., but not in
Peru. Peru also does not recognize "second use" patents.

Ultimately, the SME should take a protective and preventive stance to
prevent any unauthorized use of their intellectual property. Use every
legal means available to prevent the possibility of patent infringement.
To protect their patent once an infringement occurs, the company will
have to invest considerable resources such as time and money to address
the infringement through INDECOPI's lengthy administrative process and
the overwhelmed Peruvian court system.

## Enforcement Approaches- How to address Infringement?

Under the Peruvian legal system, a patent holder may chose among
administrative, civil and criminal actions to enforce their intellectual
property rights and may also request Peruvian customs to takes measures
against an infringing party. When choosing an administrative action, it
is again worth noting that the Patent Office (Inventions and New
Technologies Office), as is the case with the Trademark Office, within
INDECOPI lacks the ability to levy indemnification fines upon the
infringing party that would compensate the patent holder. Consequently,
the patent holder may choose to bring an action for claims or damages
before the civil courts and may also request that the Public
Prosecutor's Office institute criminal proceedings when administrative
channels have been exhausted,

**Actions Against Infringers**

**Administrative Action**

To protect their patent rights, the patent holder may file a
denouncement (*denuncia*) and/or a request for an Inspective Visit
(*Visita Inspectiva*) with INDECOPI.

Through these filings, the patent holder may request that the Patent
Office

-   Stop any further infringement of the patent

-   Decommission, remove, or immobilize all suspect products

-   Adopt necessary methods so that the custom authorities prevent the
    entrance into the country of these suspect products.

-   Close temporarily the establishment

**Source**: (Andean Community Decision 486: Article 238-244); INDECOPI

The denouncement, and the Inspective Visit application each cost 5% of
the UIT. These applications should include:

-   The applicant's and/or his attorney's identification number

-   The Patent Certificate Number that is being infringed upon

-   The address of those persons infringing upon the patent right

-   A description of the infringement including the location, the
    methods, and other relevant information.

These applications may also request a restraining order (*medida
cautelar*) against the alleged infringer. With this order, INDECOPI will
seize the material to prevent further sales, and associated documents to
prevent their destruction. After conducting an investigation, the Patent
Office will rule on the merit of the denouncement within 30 business
days. Either party has the right to appeal this decision. This appeal
must be filed with the Intellectual Property Court within 5 days of the
Resolution Notification and costs 14% of the UIT.

If INDECOPI rules infringement has occurred, it will levy a fine
(*multa*) up to 150 UIT upon the infringing party. The severity of this
fine depends upon the level of infringement, the nature of the
cooperation by the infringer during the proceedings, and precedent of
previous fines. The original patent holder does not receive compensation
from these fines. Instead, INDECOPI uses the fines as a means to
dissuade future infractions from the infringing party and unrelated
third parties.

**Source**: DL 823

**Legal Action**

If a patent holder receives a favorable ruling in their motions, they
may choose to bring forth further legal action in the Peruvian court
system. If found guilty within the legal system, Peruvian criminal law
allows the judiciary to impose imprisonment (between 2-8 years) and/or
indemnification fines (between 30-120 an average day's wages) upon the
infringer. The judiciary bases these fines upon the seriousness, and
frequency of the infringing action. Unfortunately, the judiciary always
suspends the imprisonment sentences of guilty infringers. Currently, no
infringers have served any jail time. The guilty party must also agree
not to work in the same field that the infringement occurred for one
year after they finish their incarceration.

**Source**: Legislative Degree 823, Law 28289

## Peruvian Customs

When patent owners have suspicions of possible infringement, they may
present the customs authority with detailed information as to the
alleged infringement. If the customs authority agrees with their
suspicions, the patent owner may request that Peruvian customs prevent
any further importation or exportation of the counterfeit good. The
customs authority will then allow the patent owner the opportunity to
participate in the inspection of the alleged counterfeit goods. The
original importer or exporter of the goods shall be given the same
opportunity.

After this inspection, the customs authority may rule against the patent
owner's original request. In this case, the customs authority orders a
temporary suspension and then notifies both disputants of their
decision. The patent owner has 10 business days to dispute this ruling
through an initiation of infringement proceedings. If the patent holder
fails to act, the temporary suspension shall be lifted and the goods
will be released.

**Source**: Andean Community Decision 486: Articles 250, 251, 252, 253,
254.

## Other Sources of Information

**Ask the Experts**

***Disclaimer**: Inclusion of material in this IPR Toolkit does not
constitute legal advice and is not a substitute for advice of legal
counsel and is subject to change according to the laws of the Republic
of Peru. The United States Government will strive to update and improve
this Toolkit as information becomes available and as U.S. government
resources allow. Additionally, the U.S. Government, the U.S. Department
of Commerce, their employees, and its contractors, assume no legal
liability for the accuracy, completeness, or usefulness of any
information, resource, or process contained disclosed herein.*

***Links to External Web Sites**: Links to web sites outside the U.S.
Federal Government or the use of trade, firm, or corporation names
within the U.S. Department web sites are provided for the convenience of
the user. Such links or use does not constitute an official endorsement
or approval by the U.S. Government of any private sector web site,
product,* or service.

**General Intellectual Property Links**

[Andean Community Section on Intellectual Property
(Spanish)](http://www.comunidadandina.org/propiedad.htm)

[Andean Community Patent Manual
(Spanish)](http://www.comunidadandina.org/public/patentes.pdf)

[Andean Community Decision 486: Common Intellectual Property Regime
(English)](http://www.comunidadandina.org/ingles/normativa/D486e.htm)

[List of Lawyers Specializing in Intellectual
Property](http://www.washlaw.edu/links/index.php?viewCat=95)

[WIPO Intellectual Property Handbook: Policy, Law and
Use](http://www.wipo.int/about-ip/en/iprm/)

[WIPO Publication: Managing Patent Costs: An
Overview](http://www.wipo.int/sme/en/documents/pdf/managing_patent_costs.pdf)

**INDECOPI Forms and Documents**

[Application for a Patent Registration of an Invention or a Utility
Model](http://200.121.68.202/portalIndecopiWebApp/ArchivosPortal/estatico/formatos/oin/F-OIN-01.doc)

[Application for an Industrial Design
Registration](http://200.121.68.202/portalIndecopiWebApp/ArchivosPortal/estatico/formatos/oin/F-OIN-02.doc)

[Application for the Registration of Collective Knowledge of Indigenous
Towns](http://200.121.68.202/portalIndecopiWebApp/ArchivosPortal/estatico/formatos/oin/F-CC-1.doc)

[Application for the Registration of a Integrated Circuit
Design](http://200.121.68.202/portalIndecopiWebApp/ArchivosPortal/estatico/formatos/oin/F-CI-1.doc)

[Application for the Registration of a Certificate of
Obtainer](http://200.121.68.202/portalIndecopiWebApp/ArchivosPortal/estatico/formatos/oin/Formato Certificado Obtentor.pdf)

[INDECOPI Invention
Manual](http://200.121.68.202/portalIndecopiWebApp/ArchivosPortal/estatico/informes/oin/manualdelinventor-OIN.pdf)

**Legislation**

[Peruvian IP
Legislation](http://www.wipo.int/clea/en/clea_tree1.jsp?expand=PE#PE)

**Recent Patent Cases Involving U.S. Firms**

[Eli Lilly and Company vs. Distruidora Internacional de medicamentos
s.a.c.](http://200.121.68.210/SPI_Jurisprudencia/documentos/1-45/2006/20060000904.pdf)

[Pharmacia Corporation vs. Asociación de Industrias Farmacéuticas de
origen y capital nacionales
(ADIFAN)](http://200.121.68.210/SPI_Jurisprudencia/documentos/1-45/2006/20060000763.pdf)

[Warner-Lambert Company LLC vs. Ranbaxy- PRP (Perú)
S.A.C.](http://200.121.68.210/SPI_Jurisprudencia/documentos/1-45/2006/20060000729.pdf)

[Ranbaxy- PRP (Peru) S.A. C. vs. Warner-Lambert Company
LLC](http://200.121.68.210/SPI_Jurisprudencia/documentos/1-45/2006/20060000692.pdf)

[Ortho-McNeil Pharmaceutical,
Inc.](http://200.121.68.210/SPI_Jurisprudencia/documentos/1-45/2006/20060000565.pdf)

[Eli Lilly and Company & Eli Lilly and Company Limited vs. Ozone
Organics
E.I.R.L.](http://200.121.68.210/SPI_Jurisprudencia/documentos/1-45/2006/20060000529.pdf)

[Pfizer Products Inc. vs Asociación de industrias farmacéuticas de
origen y capital nacionales
(ADIFAN)](http://200.121.68.210/SPI_Jurisprudencia/documentos/1-45/2006/20060000473.pdf)

**Frequently Asked Questions**

**Q: What is prior art?**

A: Prior art consists of the state of knowledge, understanding, and
awareness of a specific field. An inventor undertakes a prior art search
to ensure that their patent application does not conflict with prior
registrations. Similarly, this search helps the applicant to demonstrate
the novelty of their invention within the relevant field. For more
information, visit
<http://www.wipo.int/sme/en/documents/prior_art.html>.

**Q: What is the UIT?**

A: In 2006, 1 UIT (Unidad Impositiva Tributaria) unit is equal to
S/.3400. Peru's legislature changes this amount annually.

**Q: What is the Patent Cooperation Treaty?**\
A: The Patent Cooperation Treaty (PCT) is a simplified procedure for an
applicant to apply for and eventually obtain patents in multiple
countries. In essence, it allows applicants to file a single patent
application in one country and, for up to thirty months, retain the
option of filing corresponding applications in a large number of other
countries. In addition, the applicant can take advantage of this
additional time, up to 30 months, to test the market and/or product to
determine whether to proceed with additional patent applications in
other countries, and to raise capital to fund the filing of national
phase applications.

**Q: Can the rights of a patent holder be lost or nullified?**\
A: A patent holder can lose their exclusive right to the patent if they
fail to follow INDECOPI procedures. For example, if the patent holder
fails to pay the patent annuities on time, the rights of the patent
holder to protect the patent will be lost. fall into In this case, the
patented product or procedure would fall into the public domain. If the
patent holder fails to commercially exploit the patent within a
three-year stretch, another party can file to have the patent nullified.
To apply for nullification, the claimant needs to submit basic
biographical information, the patent number in question, and reasons
behind the nullification request. This application costs 20% of the UIT.
After 30 working days, INDECOPI rules on the application. The applicant
can present a motion for reconsideration (9% of the UIT) or an appeal
(14% of the UIT) within 15 working days of the notification.

**Q: Is it possible to apply both for an invention and utility model
patent for the same subject matter?**\
A: It is possible to apply both for invention and a utility model
patents for the same subject matter. However, the same invention cannot
be protected by both a patent for invention and a patent for a utility
model. As a result, the applicant will eventually be required to choose
between the two types of protection.

**Q: Can a patent be lost to compulsory licensing?**\
A: According to Andean Community Decision 486, a patent may be lost to
compulsory licensing if it fails to meet certain requirements. For
instance, if after 3 years, the patent owner fails to manufacture, sell,
or grant a reasonable licensing agreement, an interested party may apply
for compulsory licensing of the original material. Despite the legal
capacity, compulsory licenses have never been issued in Peru.

# Chapter 6: Trade Secret and Unfair Competition** **

This section covers:

-   Introduction

-   Domestic Legislation and Treaties

-   Enforcement Approaches- How to address Infringement?

-   Types of Actions Against Infringers

-   Administrative Action

-   Legal Action

-   Other Sources of Information

### 

## Introduction

An agency of INDECOPI's Office of Inventions and New Technologies, the
Commission on Unfair Competition (*la Comisión de Competencia Desleal*),
provides for the protection against illegal disclosure, acquisition, or
use of a firm's trade secrets. To be protected the information must not
be common knowledge within industry circles and must have some
commercial value. The firm must also have taken previous steps to
prevent any illegal information disclosure.

Examples of trade secrets include:

-   Compilations of customer data

-   Organizational designs and blue prints

-   Business strategies, methods, and marketing plans

-   Information about Research and Development Activities

**Source**: Law 26122; Legislative Decree 823; TRIPS Article 39.2, WIPO:
Trade Secrets are Golden Nuggets: Protect Them.

## Domestic Legislation and Treaties

[Law
26122](http://200.121.68.202/portalIndecopiWebApp/ArchivosPortal/estatico/legislacion/ccd/tuo26122.pdf)

[Legislative Decree
691](http://200.121.68.202/portalIndecopiWebApp/ArchivosPortal/estatico/legislacion/ccd/tuo691.pdf)

[Legislative Decree 823- Industrial Property
Law](http://www.wipo.int/clea/docs_new/pdf/en/pe/pe008en.pdf)

[Trade Related Aspects of Intellectual Property
(TRIPS)](http://docsonline.wto.org/DDFDocuments/t/UR/FA/27-trips.doc)

[Andean Community Decision
486](http://www.wipo.int/clea/docs_new/pdf/en/ac/ac005en.pdf)- Common
Regimen Concerning Industrial Property (*Decisión 486- Régimen Común
sobre Propiedad Industrial*).

### 

## What Constitutes Infringement?

Under Peruvian law, infringement consists of:

-   Disclosing or using information protected by a confidentially
    agreement

-   Acquiring information by illegal means including theft, bribery or
    espionage.

**Source**: Andean Community Decision 486: Art 162, Law 26122, WIPO:
Trade Secrets: Policy Framework and Best Practices. 

## How to Address Infringement

**Precautionary Measures**

There exists several precautionary measures that one can use with
respect to their trade secrets. First, the firm should decide whether
their trade secret is patentable and if so, whether undertaking the
patent process makes sense for this secret. Distinct advantages of trade
secret protection include: no registration costs, no disclosure
requirements to government agencies, no limits on time, and no delays in
implementation (i.e. it takes immediate effect.) Unfortunately, trade
secrets have distinct disadvantages as well. For example, competitors
that inspect a product and derive any trade secrets through reverse
engineering are entitled to these secrets. Moreover, this competitor may
patent this trade secret as their own, thereby depriving the original
inventor of its continued use. Finally, while trade secrets lack initial
registration costs, they still include the heavy maintenance costs of
protecting the secrets against disclosure.

Besides considering the patent process for their trade secret, the firm
may choose to use confidentiality and non-disclosure agreements. These
agreements legally bind and provide means of sanctioning the employee or
anyone else with access to the information from illegal disclosure.

**\
Administrative enforcement\
**

According to the rights of trade secret, the owner may bring forth legal
action with INDECOPI against those persons that have infringed upon
their trade secrets.

## 

## Types of Actions Against Infringers:

The company with trade secrets may request that INDECOPI order the
infringing party to:

-   Stop all violations of the trade secret, including:

    -   Withdrawing all products and packaging related to the
        infringement

    -   Destroying the products and related materials

    -   Closing temporarily the infringing establishment

    -   Having a condemnation against them published.

**Administrative Action**

INDECOPI offers several administrative options for holders of trade
secrets who suspect infringement of their secrets. These options
include: an infringement action (*denuncia*), an inspective visit
(*visita inspectiva*), and a restraining order (*medida cautelar*) filed
with the Commission for the Repression of Unfair Competition.

Depending upon the type of action requested, these motions cost between
9.70-36.24% of the UIT. These motions should also include relevant
details such as:

-   The identification number of the trade secret holder and their
    attorney

-   A description of the alleged infringement including details such as
    the infringing party's name, business identification number,
    business name, business address, location and methods of the
    infringing activity, and all other relevant details.

After conducting an investigation, the Commission will rule on the merit
of the motions by issuing a notification, and if necessary enact these
motions within 30 business days. Either party involved has the right to
appeal the Commission's decision. This appeal must be filed with
INDECOPI's Intellectual Property Court within 5 days of this
notification and costs 18.12% of the UIT.

If INDECOPI rules infringement has occurred, it will levy a fine
(*multa*) up to 100 UIT upon the infringing party. The severity of this
fine depends upon the level of infringement, the nature of the
cooperation by the infringer during the proceedings, and precedent of
previous fines. The original trade secret holder does not receive
compensation from these fines. Instead, INDECOPI uses the fines as a
means to dissuade future infractions from the infringing party and
unrelated third parties

**Source**: Legislative Decree 823

## 

**Legal Action**

If a trade secret holder receives a favorable ruling in their motions,
they may choose to bring forth further legal action in the Peruvian
court system. If found guilty within the legal system, Peruvian criminal
law allows the judiciary to impose imprisonment (between 2-8 years)
and/or indemnification fines (between 30-120 an average day's wages)
upon the infringer. The judiciary bases these fines upon the
seriousness, and frequency of the infringing action. Unfortunately, the
judiciary always suspends the imprisonment sentences of guilty
infringers. Currently, no infringers have served any jail time. The
guilty party must also agree not to work in the same field that the
infringement occurred for one year after they finish their
incarceration.

**Source**: Legislative Degree 823, Law 28289

## Other Sources of Information 

**Ask the Experts**

***Disclaimer**: Inclusion of material in this IPR Toolkit does not
constitute legal advice and is not a substitute for advice of legal
counsel and is subject to change according to the laws of the Republic
of Peru. The United States Government will strive to update and improve
this Toolkit as information becomes available and as U.S. government
resources allow. Additionally, the U.S. Government, the U.S. Department
of Commerce, their employees, and its contractors, assume no legal
liability for the accuracy, completeness, or usefulness of any
information, resource, or process contained disclosed herein.*

***Links to External Web Sites**: Links to web sites outside the U.S.
Federal Government or the use of trade, firm, or corporation names
within the U.S. Department web sites are provided for the convenience of
the user. Such links or use does not constitute an official endorsement
or approval by the U.S. Government of any private sector web site,
product,* or service.

**General Intellectual Property Links**

[Andean Community Section on Intellectual Property
(Spanish)](http://www.comunidadandina.org/propiedad.htm)

[Andean Community Decision 486: Common Intellectual Property Regime
(English)](http://www.comunidadandina.org/ingles/normativa/D486e.htm)

[List of Lawyers Specializing in Intellectual
Property](http://www.washlaw.edu/links/index.php?viewCat=95)

[WIPO Intellectual Property Handbook: Policy, Law and
Use](http://www.wipo.int/about-ip/en/iprm/)

[WIPO: Trade Secrets are Gold Nuggets: Protect
Them](http://www.wipo.int/sme/en/documents/wipo_magazine/04_2002.pdf)

[WIPO: Trade Secrets: Policy Framework and Best
Practices](http://www.wipo.int/sme/en/documents/wipo_magazine/05_2002.pdf)

# Legislation

Peruvian IP Legislation

# Reference Materials 

*Links to websites outside the US government or the use of trade, firm
or corporation names are provided for the convenience of the user. Such
links or use do not constitute official endorsement or approval by the
US government of any private sector website, product or service.*

## U.S. Government 

[United States Department of State](http://www.state.gov/)

[United States Department of Commerce](http://www.doc.gov/)

[United States Trade Representative](http://www.ustr.gov/)

[United States Patent and Trademark Office](http://www.uspto.gov/)

[United States International Trade Commission](http://www.usitc.gov/)

[United States Strategy Targeting Organized Piracy
(STOP!)](http://www.stopfakes.gov/)

[Department of Justice, Computer Crime and IP
Section](http://www.cybercrime.gov/)

[DHS/Customs and Border Protection](http://www.cpb.gov/)

[Copyright Office, Library of Congress](http://www.copyright.gov/)

[United States International Trade
Commission](http://www.cbp.gov/xp/cgov/import/commercial_enforcement/ipr/ipr_enforcement/ipr_criminal_violations.xml)

## American Chamber of Commerce 

The American Chamber of Commerce represents different industry sectors
that give added value to economy including investment in the development
and the protection of Intellectual Property Rights.

The [Intellectual Property
Committee](http://www.amcham.org.pe/intellectual.htm) is comprised of
the following sectors:

Film Industry

Pharmaceutical

Recording Industry

Information Technology

Consumer Products

Crop Protection

Contact us: <ipr@amcham.org.pe>

##  

## List of Peruvian / U.S. Law Firms with operations in Peru

-   [Barreda Moller](http://www.barredamoller.com/)

-   [Bernizon, Loret de Mola & Benavides
    Abogados](http://www.blmblegal.com/)

-   [Clark, Modet & Co. Peru](http://www.clarkemodet.com/)

-   [Duany, Matto & Carrasco Abogados](http://www.dmcabogados.com/)

-   [Estudio Aurelia Garcia Sayán
    Abogados](http://www.garciasayan.com.pe/)

-   [Estudio Francisco Espinosa Bellido
    Abogados](http://www.espinosabellido.com/)

-   [Fernández Dávila & Bueno Abogados](http://www.fdlex.com.pe/)

-   [Ferrero, Lema, Solari & Santivañez
    Abogados](http://www.ferrero.com.pe/)

-   [KPMG -- Grellaud y Luque Abogados](http://www.pe.kpmg.com./)

-   [Miranda & Amado Abogados](http://www.mafirma.com.pe/)

-   [Muñiz, Ramírez, Pérez-Taiman & Luna Victoria
    Abogados](http://www.munizlaw.com/)

-   [Payet, Rey, Cauvi Abogados](http://www.prc.com.pe/)

-   [Estudio Rosselló](http://www.rossellolaw.com/)

-   [Estudio Hernández](http://www.ehernandez.com.pe/)

-   [Estudio Aramburú, Camino, Boero &
    Asociados](http://www.acb-abogados.com/)

-   [Estudio Osterling](http://www.osterlingfirm.com/)

-   [Rodríguez Mariátegui & Vidal -
    Abogados](http://www.rmv-law.com.pe/)

-   [Estudio Olaechea Sociedad Civil](http://www.esola.com.pe/)

-   [Barrios Fuentes Urquiaga, Abogados](http://www.bafur.com.pe/)

-   [Pérez Vasquez & Asociados Estudio de
    Abogados](http://www.epclawperu.com/)

-   [Rey & De Los Ríos, Abogados](http://www.reyrios.com/)

-   [Estudio Rubio, Leguia, Normand y
    Asociados](http://www.erubio.com.pe/)

-   [Estudio Ferrero Abogados S.C.R.L](http://www.ferrero.com.pe/)

-   [Estudio Bellido, Saco-Vértiz & Bellido
    S.C.R.L.](http://www.estudio-bsb.com/)

-   [Estudio Llona & Bustamante
    Abogados](http://www.abogadoperu.com/abogados-estudios-notarias-peru-21775-estudio-llona-bustamante-abogados-ley.php)

-   [Estudio Yori Abogados](http://www.yoriabogados.com.pe/)

-   [Estudio Villegas S.A.C.](mailto:itrelles@villegasabogados.com.pe)

-   [Carrera, Pinatte & Baca-Alvarez Abogados S. Civil de R.
    L.](http://www.cpb-abogados.com.pe/)

-   [Mazza-Martínez & Assoc., P.A.](http://www.mazzamartinez.com/)

-   [Santistevan de Noriega & Associados
    Abogados-Consultores](http://www.santistevandnoriega.com/)

-   [Rebaza, Alcázar De las Casas Abogados
    Financieros](http://www.rebaza-alcazar.com/)

-   [Estudio Echecopar](http://www.echecopar.com.pe/)

-   [Piérola & Asociados S. Civ.
    R.L.](http://www.pierola-asociados.com/)

-   [American Law Link](http://www.americanlawlink.com/)

-   [Panez, Chacaliaza & Asociados](mailto:virgilio.castro@rsmperu.com)

-   [Rodrigo, Elías & Medrano, Abogados S. Civil De
    R.L.](http://www.estudiorodrigo.com/)

-   [Abelman, Frayne & Schwab](http://www.lawlabel.com/)

-   [Alston & Bird LLP](http://www.alston.com/)

-   [Blakely Sokoloff Taylor & Zafman LLP](http://www.btz.com/)

-   [Cowan, Debaets, Abrahams, Sheppard, LLP](http://www.cdas.com/)

-   [Thompson Hine LLP](http://www.thompsonhine.com/)

-   [Watts Hoffmann Co., L.P.A.](http://www.wattshoff.com/)

-   [Gibson Dunn & Crutcher LLP](http://www.gibsondunn.com/)

-   [Shearman & Sterling LLP](http://www.shearman.com/)

-   [Skadden Arps Slate Meagher & Flom](http://www.skadden.com/)

-   [Dowell & Dowell, PC.](http://pview.findlaw.com/view/1063503_1)

## 

## Industry Organizations

-   [American Bar Association](http://www.abanet.org/)

-   [Association of American Publishers](http://www.publishers.org/)

-   [Biotechnology Industry Organization](http://www.bio.org/)

-   [Business Software Alliance (BSA)](http://www.bsa.org/)

-   [Business Software Alliance Peru](http://www.bsaperu.org/)

-   [Entertainment Software Association](http://www.theesa.com/)

-   [International Anti-Counterfeiting Coalition](http://www.iacc.org/)

-   [International Federation of Pharmaceutical Manufacturers &
    Associations](http://www.ifpma.org/)

-   [International Federation of the Phonographic Industry
    (IFPI)](http://www.ifpi.org/)

-   [International Intellectual Property Alliance
    (IIPA)](http://www.iipa.com/)

-   [International Research-Based Pharmaceutical Manufacturers
    Association (IRPMA)](http://www.irpma.org.tw/english/)

-   [International Trademark Association](http://www.inta.org/)

-   [Motion Picture Association](http://www.mpaa.org/anti-piracy/)

-   [Music Publishers Association](http://www.mpa.org/)

-   [Pharmaceutical Research and Manufacturers of America
    (PhRMA)](http://www.phrma.org/)

-   [Pharmaceutical Security Institute](http://www.psi-inc.org/)

## 

## International Organizations

-   [World Trade Organizations, resources on TRIPS](http://www.wto.org/)

-   [World Intellectual Property Organization](http://www.wipo.int/) 

# Abbreviations

**AMCHAM**- American Chamber of Commerce of Peru (*Cámara de Comercio
Americana del Perú*)

**Copyright Office**- Office of the Rights of the Author

**GATT**- General Agreement on Tariffs and Trade

**IIPA**- International Intellectual Property Alliance

**INDECOPI**- National Institute for the Defense of Competition and the
Protection of Intellectual Property (*Instituto Nacional de Defensa de
la Competencia y de la Protección de la Propiedad Intelectual*)

**IP**- Intellectual Property

**IPR**- Intellectual Property Rights

**Patent Office**- Office of Inventions and New Technologies

**PCT**- Patent Cooperation Treaty

**PROMOLIBRO**- (*el Consejo Nacional de Democratización del Libro y de
Fomento de la Lectura*)

**SUNAT**- Tax and Custom's Authority (*Superintendencia Nacional de
Administración Tributaria*)

**TCC**- Trade Compliance Center within the Department of Commerce

**Trademark Office**- Office of Distinct Signs

**TRIPS**- Trade Related Aspects of Intellectual Property

**UIT**- Unidad Impositiva Tributaria

**USPTPA**- United States-Peru Trade Promotion Agreement

**WCT**- WIPO Copyright Treaty

**WIPO**- World Intellectual Property Organization

**WPPT**- WIPO Performances and Phonograms Treaty

**WTO**- World Trade Organization

[^1]: There is an optional registration process. See Registration
    Process.

[^2]: There is an optional registration process. See Registration
    Process.

[^3]: This process applies to the registration of literary, scientific,
    and technical works. The registration for other types of works may
    vary. With this in mind, many companies retain qualified legal
    counsel to apply to protect their copyrighted material.

[^4]: In 2006, the UIT is 3400 Nuevos Soles (NS).

[^5]: In 2006, the UIT is 3400 Nuevos Soles (NS).

[^6]: In 2006, the UIT was 3400 Nuevo Soles (NS).

[^7]: During the application process, INDECOPI may also require the
    applicant to submit additional documents (*los plazos*). It is
    important that applicants keep their contact information current.
    Failure to respond to additional requests for information may result
    in an abandoned application.