Sometimes the definition or meaning of expert, profession or professional varies from region to region around the world. Patent professionals in the United States can be divided into two main groups, patent agents and patent attorneys. But what happens when we try to match these professionals with their counterparts in other geographic sections? Latin America is one of those regions; it is actually a region with several sub-regions. The references and terminologies used are from the perspective of a Latin American patent professional, trying to show local understanding and in some cases clarify concepts. We begin by explaining the geography of the region, both in the sense of natural geography and relevant geography, since many times these do not match. You can see on a map that certain countries are evidently in South America, but in Intellectual Property issues, they need to be treated as Caribbean countries. This is relevant information to consider when planning patent protection strategies in the region.
1. Latin America – 4 sub regions
Four sub regions are usually recognized in Latin America. From north to south these are Mexico and Central America, the Caribbean Islands, South America and Brazil. A large majority of countries are members of the Patent Cooperation Treaty (PCT), with the exception of (in order of size) Argentina, Venezuela, Uruguay, Paraguay, Bolivia, Guyana, Suriname and Haiti.
Mexico and Central America
- Mexico. It is one of the largest countries in the region. Some people, particularly in the United States, consider Mexico to be part of Central America; however, that is not the perception of Latin Americans. Mexico is part of North America along with Canada and the United States. Mexico is one of the most active countries in intellectual property issues, only behind Brazil in the number of patent applications filed annually.
- Central America. The isthmus between Mexico to the north and Colombia to the south is made up of seven independent countries, each with its own constitution, government, laws and courts. In geographical order, these are Guatemala, Belize, El Salvador, Honduras, Nicaragua, Costa Rica, and Panama. All except Belize (a country considered part of the Caribbean for intellectual property purposes) are of Spanish descent, speak Spanish and follow the Civil Law system. There is no integration of any kind. Regarding intellectual property, there are no common or regional regulations, except for the standardization implemented by the World Trade Organization through the Agreement on Aspects of Intellectual Property Rights with Commerce (TRIPS in Spanish or TRIPS in English). Among the seven countries,
- Countries. There are 16 sovereign and independent countries in the Caribbean. The most relevant from a patent professional’s point of view are the Dominican Republic, Trinidad and Tobago, Jamaica and Cuba. Caribbean countries have varied legal systems, with the Dominican Republic and Cuba using the Civil Law system, while others with a British tradition use the Common Law System, such as Jamaica and Trinidad and Tobago. There is a certain level of integration between countries through organizations such as the Caribbean Community (Caricom) and the Organization of Eastern Caribbean States (OECS), but such integration does not include regional patent applications.
- Territories. These are territories that, from the perspective of an intellectual property law professional, are not sovereign countries with their own patent offices or trademark registrations. Some depend on other countries, such as Puerto Rico (United States), the Turks and Caicos Islands (United Kingdom) and Saint Martin (France), while others are part of or have been integrated into other countries as is the case. from Curaçao (Netherlands) and Martinique (France).
- Generalities . South American countries generally have a Spanish tradition, follow the Civil Law system and speak Spanish. The exceptions are Brazil (which due to its magnitude in the world of intellectual property has its own section in this article), Suriname and the Guyanas (with Dutch and British tradition respectively) which for intellectual property purposes are considered Caribbean countries.
- Brazil : By far the largest and most populous country in Latin America, it is sometimes referred to as a subcontinent within the continent. Of Portuguese heritage, Brazil is the only country in South America where Spanish is not spoken. Brazil follows a Civil Law System and has the highest number of patent and trademark applications on the continent. Consequently, it also has the largest number of patent and trademark professionals.
2. Patent professionals
It is always important to understand who does the work and what kind of work they are doing routinely. In general, a Latin American patent professional is a legal professional with expertise or specialized knowledge in patents or a professional with a technical degree with expertise or specialized knowledge in patents. Since there is no requirement to incorporate an association of patent professionals in any Latin American country, patent expertise is recognized among its peers, not by a formal entity after examination. There are some patent professionals who have both the technical degree and the law degree; a rare achievement, as law school generally requires four to five years to complete. The relatively low amount of work requires technical experts to be “patent competent” in broad technical areas. It is common to find pharmaceutical professionals handling chemical or biochemical patent jobs, or mechanical engineers handling civil, electrical, or materials engineering patent jobs.
When looking at where these professionals work, there is an initial distinction to be made, patent professionals who are doing work for the companies or universities where they work, and patent professionals who are doing work for their clients.
Internally . Compared to other regions of the world, Latin America has a relatively small number of professionals who perform patent drafting and registration work for their own employer, be it companies, research centers, governments or universities. Obviously, by the total number of local patent applications, Brazil and Mexico are the countries where it happens the most, with Mexico in a distant second place. Generally, technical work is performed by a technical professional within the entity, with the registration process handled by the same technical expert or an attorney with experience in patent prosecution.
Legal offices. Most of the region’s patent professionals work for high-volume law firms due to foreign patent prosecution work. And a higher volume of patents is the only way to get real experience. Most of the patent work in a law firm is done in one of four models.
- Only. A patent attorney working alone is a rare situation. They are usually recognized professionals who left or retired from a law firm or company. This type of patent professional is not visible to foreign applicants and does most of their work for law firms or larger companies that do not have a patent practice area.
- Boutique. Boutique law firms doing mostly or exclusively patent work are also rare. The most common boutique IP law firms are those that deal with both trademark work and patent prosecution. Several of the best and best known patent attorneys in Latin America work for IP boutiques Obviously, the definition of a boutique company varies from country to country, from a small Latin American country, where two to ten lawyers work, to Argentina, Mexico and Brazil, where they may be approaching a hundred professionals. The patent professionals in a typical boutique are technical professionals, usually chemical, biochemical or pharmaceutical, and legal professionals. Legal professionals handle not only litigation, but also most of the patent prosecution and customer relationship. Technical professionals manage the interaction between examiners in the patent office and clients’ technical teams. The largest IP boutiques in Latin America have structured their patent practice in much the same way as the largest IP law firms in the United States.
- General practice. Among the general practice firms, there is only one practice specialized in patents in the largest in the country, regardless of the country in question. The practice of intellectual property in large general practice offices is common that is mainly dedicated to trademark work. Only some of these firms have relevant patent experience, but those that do are frequently recognized among the best patent practices in their country. These types of firms benefit from valuable interaction between practice areas, something difficult to find in the average boutique firm. The interaction of patent practice with litigation, life sciences, regulatory, competition, consumer, etc. it is highly appreciated by many patent clients.
- Regional. There are no regional law firms with a presence in a significant number of Latin American countries, but there are some subregional firms. A general practice firm with its own offices in several countries and a relevant patent practice is very rare. I am fortunate to work in one, but there are not many others. The advantage of this type of firm is its ability to handle quality patent work in various countries. The patent attorney in a regional practice not only handles prosecution and litigation in his own country, but usually also coordinates regional work for his clients. Technical professionals not only work in multiple practice areas, but also handle the technical aspects of patent applications in various countries in the region.
Patent workflow in Latin America
In all Latin American countries, patent professionals tend to do more foreign work than local work. This means that most of them are handling the local prosecution of foreign patent applications as their main activity. The technologies with the most patent applications in the region are pharmaceuticals, agrochemicals and biotechnology. Some countries have a significant number of patent applications on specific technologies, such as petroleum-related technologies in producing countries.
There is very little local work on patents. This is why patent professionals in these countries perform local patent work primarily as pro bono,or as part of a marketing strategy, not as a real source of business. Foreign work can come directly from the applicant company, from the company that is in charge of international patent prosecution, or from a company that is in charge of prosecution in a specific region. The region’s patent professional is used to identifying three types of clients: those who expect an experienced patent professional with a degree or technical knowledge (the most demanding client); those who expect an experienced patent professional (the average patent client); and those who expect only a professional who knows where to file a patent and has the administrative infrastructure that allows him to enter the national phase on time (the least sophisticated client). A client in the first group will have to do some research to find a patent attorney capable of meeting their expectations. A client from the latter group will be satisfied with an honest profession
4. Best practices and recommendations
When submitting patent work to Latin America, it is always helpful to have basic information about the country or countries where the work is to be submitted. Having the opening section of this article handy might be helpful. Always try to align your service expectations with the patent professionals you hire. Do not assume that an intellectual property firm in Latin America, simply because of its size, will have the technical capacity to handle patents. The rule of thumb is that all IP firms have good trademark practice, and any patent firm handles trademark work well, but only very good IP firms, or practice areas of a law firm. Generally, they handle complex trademark and patent jobs. If you trust a qualified patent professional in a certain country, this may be the best source of reference to find another equally qualified in another country. We know each other among the qualified patent professionals in Latin America, we may not know all the qualified professionals, but at least we know the qualified firms. Only a few patent professionals in each Latin American country are capable of handling complex patent or litigation matters. The cost and fees for professional patent work are not that different from one law firm to another. By managing volume, even the most sophisticated law firms have competitive rates. When managing regional work, look for regional offices with patent expertise. We may not know all the qualified professionals, but at least we know the qualified firms. Only a few patent professionals in each Latin American country are capable of handling complex patent or litigation matters. The cost and fees for professional patent work are not that different from one law firm to another. By managing volume, even the most sophisticated law firms have competitive rates. When managing regional work, look for regional offices with patent expertise. We may not know all the qualified professionals, but at least we know the qualified firms. Only a few patent professionals in each Latin American country are capable of handling complex patent or litigation matters. The cost and fees for professional patent work are not that different from one law firm to another. By managing volume, even the most sophisticated law firms have competitive rates. When managing regional work, look for regional offices with patent expertise. The cost and fees for professional patent work are not that different from one law firm to another. By managing volume, even the most sophisticated law firms have competitive rates. When managing regional work, look for regional offices with patent expertise. The cost and fees for professional patent work are not that different from one law firm to another. By managing volume, even the most sophisticated law firms have competitive rates. When managing regional work, look for regional offices with patent expertise.
Luis Diego Castro is a Costa Rican-based patent attorney, partner of Arias ( www.ariaslaw.com ), among the largest regional general practice law firms in Central America with an important regional patent practice, and with offices in Costa Rica, Guatemala, El Salvador, Honduras, Nicaragua and Panama. Foreign associate of AIPLA, member of the Patent Agents, Practice in Latin America and Biotechnology committees.
Originally published in English in AIPLA’s Patent Agents Committee newsletter ‘The Agent’, Volume 3, Number 2. May 2021.