In the 4th of our Pekama Supplier Interviews we talk to Valeria Carron of Berkemeyer, Paraguay
Hi Valeria, how many IP professionals work in your firm?
Berkemeyer Attorneys and Counselors has a staff of approximately 150 people. There are 3 partners and around 50 attorneys, the rest of the team is mostly composed by paralegals and administrative staff.
How long have you been practicing IP?
I have been practicing for 9 years and I’ve been in the firm for almost 10 years.
What is the focus of your practice?
It’s a general practice law firm, mostly focused on IP and on Corporate law.
Tell us a bit more about yourself. What do you like to do in your spare time?
I really enjoy spending time with my family, and when I am at home I find home décor and painting very relaxing.
What do you see as the biggest challenges to the IP industry?
In Paraguay, I would say that the main challenge is the fight against counterfeiting. We are at the tri-border area with Brazil and Argentina and many counterfeit goods go through Customs in said area.
Also, I think that another challenge for IP attorneys nowadays could be seeking for the proper protection of the brands through social media.
What are the biggest changes you have seen within the IP Industry?
In Paraguay, a big step if that the Trademark Office now has a public database.
How do you see yourself making a difference to the IP Industry?
I think that my main role as an attorney is to give good advice to my clients, but not only good legal advice but also “business advice”, since, in my opinion, the IP world has a mixture of law and business (commercial) aspects.
Turning to your services now, we want to assemble some useful information for our community members and make them more aware of the different ways IP is handled in different jurisdictions, so I would like to ask you some questions about IP protection in one of the jurisdictions where you practice. What is the jurisdiction that you would like to talk about?
Starting with patents – Is Paraguay a member of the Paris convention and PCT?
Our country is member of the Paris Convention only.
What is the typical time from filing to grant in your jurisdiction?
In our jurisdiction, the time from filing to grant takes approximately 5 to 6 years.
Is Paraguay a member of any PPH agreements?
Ye,s it is.
Is there a green track for environmentally-friendly inventions?
Are there other acceleration processes?
Can you elaborate on opposition processes – how do they work, what do they typical cost and how long do they take?
Our law does not contemplate opposition procedures, instead, we have the Third party observations to the application: Any interested party may submit to the Industrial Property Office, prior to the availability examination, such founded observations, including information and documents that may be useful to determine the patentability of the invention that is the object of the application. The applicant, once notified thereof, may file objections and comments or documents that may be deemed convenient in regard to the observations. The submission of observations shall not suspend the proceedings and the application terms. Whoever makes them, shall not become a part in the proceedings. The examiners work on the third party observations during substantial examination. We could prepare a tailor made quotation depending on the case. The time of the process varies depending on the complexity of the case.
Are there any waivers from examinations and if yes, in which terms?
What’s the approach of your jurisdiction to software / business method patents?
Software / business method patents are not patentable in our country, however, software can be protected by the Copyright Law and process.
Are there limitations to protection of healthcare-related inventions?
Yes, please note that our patent law on the Article 4th., subsection e, states the following:
Article 4. Matters excluded as inventions. Among others, the following shall not be considered inventions:
- e) diagnostic, therapeutic, surgical methods for the treatment of persons or animals;
Do you have utility models / innovation patents?
Yes, we have utility models law and process. On the opposite, innovation patents are not applicable on our country.
If yes – is there substantive examination?
Yes, there are substantive examinations for utility models.
Moving to trademarks –
Is Paraguay a member of the Madrid protocol?
Are there multi-class applications in Paraguay?
No, only single class system
What are the minimum filing requirements?
Name of the mark and device (if any), class (or product/services of interest) and name and address of the applicant. For service classes, description of the services to be protected.
A Power of Attorney will also be necessary.
Is a certified priority document required?
Yes, a certified priority document is necessary for claiming priority of a foreign application.
What is the opposition period?
60 working days counted from the final publication date.
What is the use requirement and when do marks become vulnerable for cancellation?
Use of the mark is mandatory in our country. The same is necessary to avoid cancellation actions for non use. Possible cancellation actions for non use could be filed if a) a trademark has not been used within a five years term counted from the registration date, b) if use has been interrupted for more than five consecutive years; or, if c) use of the mark have been made with substantial alterations.
For how long are trademarks valid?
For 10 years, counted from the granting date.
What is the approach to 3D trademarks?
3D marks can be registered in our country. The TMO requests views from all the sides.
What can Pekama do to help you and your business grow?
I think Pekama is a great idea. I take this opportunity to congratulate you for this development. I think that it’s a very original idea. It’s an easier way to find providers or to become a supplier. It’s global.
What are the leading economic sectors which you service in your country?
Our country´s main activities are agriculture and cattle breeding.