Título III Capítulo I. Invenciones

The following, among others, shall not constitute inventions:

a)Mere discoveries;

b)Materials or energies as found in nature;

c)Biological processes as they occur in nature and which do not involve human intervention, except microbiological processes;

d)Scientific theories and mathematical methods;

e)Purely aesthetic creations, literary and artistic works;

f)Economic, advertising or business plans, principles, rules or methods, and those referring to purely mental or intellectual activities or to games; and

g)Computer programs considered in isolation.

The following are not patentable:

a)Diagnostic, therapeutic and surgical methods for the treatment of persons or animals;

b)An invention whose exploitation would be contrary to public order or morality, it being understood that exploitation shall not be considered contrary to public order or morality solely by reason of being prohibited, limited or conditioned by any legal or administrative provision; and

c)An invention whose commercial exploitation must be prevented to preserve the health or life of persons, animals or plants or the environment.

d)Repealed. *Subparagraph d) added by Article 1 of Decree Number 76-2002 of the Congress of the Republic of Guatemala

An invention is patentable when it has novelty, inventive step and is susceptible of industrial application. *Second sentence repealed, by Article 54, of Decree Number 19-2014 (See Repeal)

An invention shall be considered to have novelty if it is not found in the state of the art.

The state of the art shall comprise everything that has been disclosed or made accessible to the public anywhere in the world and by any means, before the filing date of the patent application in the country or, as applicable, before the applicable priority date. The content of another patent application filed with the Register, whose filing date or, as applicable, priority date was earlier than that of the application under consideration, shall also be comprised within the state of the art, provided that the former was published.

For determining the state of the art, that which had been disclosed within the year preceding the filing date of the patent application or, as applicable, the applicable priority date shall not be taken into account, provided that such disclosure resulted directly or indirectly from acts performed by the inventor himself or his successor in title, or from a breach of contract by a third party or from an unlawful act committed against either of them.

Nor shall disclosure resulting from a publication made by an industrial property office abroad, as a result of a procedure for the grant of a patent, be taken into account, if the application that is the subject matter of that publication had been filed by a person who had no right to obtain the patent, or the publication had been made due to an error attributable to that industrial property office.

An invention shall be considered to have inventive level if, for a person trained in the corresponding technical field, it is neither obvious nor would have been evidently derived from the relevant state of the art.

An invention shall be considered susceptible of industrial application when its subject matter can be produced or used and has a specific, substantial and credible utility in any type of industry or productive activity. *Amended by Article 53 of Decree of Congress Number 11-2006 of 30-05-2006

The right to obtain the patent for the invention belongs to the inventor. If the invention was made jointly by two or more persons, the right to patent it shall belong to them in common.

The right to the patent is transferable by any title.

If two or more persons independently create the same invention, whoever first files the patent application or whoever invokes the earliest priority date shall have the better right, provided that such application is neither abandoned nor denied.

When an invention has been made in performance of a contract whose object is the performance of a research activity, the right to patent it belongs to the person who contracted for the performance of the research, unless otherwise agreed. This provision is also applicable to employment contracts whose object is the performance of research.

When a worker who is not obligated by his employment contract to engage in inventive activity makes an invention in the field of activities of his employer, or through the use of data or means to which he had access by reason of his employment, he shall immediately communicate this fact to his employer in writing and, at the latter's request, shall provide him with the information necessary to understand the invention.

If within a time limit of two months from the date on which he had received said communication, or had become aware of the invention by any other means, applying the time limit that expires first, the employer notifies the worker in writing of his interest in the invention, he shall have a preferential right to acquire the right to patent it.

In the event that the employer notifies his interest in the invention, the worker shall be entitled to equitable remuneration taking into account the estimated economic value of the invention, or to a share in the profits, royalties or income resulting from the commercialization of the invention, as contractually established between the parties. In the absence of agreement between the parties, the remuneration shall be fixed by a competent labor judge through incidental proceedings.

The inventor shall be mentioned as such in the patent that is granted and in the documents and official publications relating thereto, unless an authentic document on file in the Register contains their express declaration that they do not wish to be mentioned. Any agreement by which the inventor waives in advance their right to be mentioned as such or undertakes to make such declaration shall be null.

The applicant for a patent may be a natural person or legal person. The invention patent application shall be filed with the Register and shall contain:

a)The general information of the applicant or of his legal representative, evidencing such representation;

b)The place of incorporation, when it is a legal person; and

c)The name of the invention and of the inventor and his address.

The effects derived from the filing of an international application may be recognized when established in a treaty or agreement to which the Republic of Guatemala is a party. In that case, the formal examination, the publication of the application and any other aspect of the procedure shall be governed by what is established in the treaty or agreement and by the specific Regulations issued by the Executive Branch upon the suggestion of the Ministry of Economy.

The applicant for a patent may invoke priority based on a prior register application, filed in due form in any State that is party to a treaty or agreement to which Guatemala is bound. Such priority must be invoked in writing, indicating the date and the country of filing of the first application.

For the same application, multiple priorities or partial priorities may be invoked, which may originate from applications filed in two or more different States; in such case the priority time limit shall be counted from the date of the earliest priority.

The right of priority shall have a validity of twelve months counted from the day following the filing of the priority application.

The right of priority may be invoked upon filing of the new application or at any time up to within a time limit not exceeding three months from the date of expiry of the priority. To establish priority, a copy of the priority application must be attached, certified by the office or competent authority that received said application, which shall be exempt from any legalization and must have attached a simple translation if it is not drafted in Spanish. The certification referred to in this paragraph must be filed within a time limit not exceeding three months from the date of expiry of the priority.

A patent application for which the right of priority is invoked shall not be denied, revoked or annulled by reason of acts occurring during the priority time limit, performed by the applicant itself or by a third party, and such acts shall not give rise to the acquisition of any third-party right with respect to the invention in accordance with the claims contained in the first application.

Priority shall be recognized only with respect to the subject matter found in the application whose priority is invoked, provided that the invention claimed in the application is disclosed in the priority document in the manner required by Articles 105, 106 and 107 of this law.

Priority as invoked shall be governed in all other respects by the provisions of the corresponding agreement or treaty.

The following documents shall be attached to the patent application:

a)The proof of payment of the established fee;

b)The description of the invention, in duplicate;

c)The claims formulated, in duplicate;

d)Two sets of the corresponding drawings;

e)The summary of the invention, in duplicate; and

f)The title by virtue of which the right to obtain the patent was acquired, if the applicant is not the inventor.

A copy of each document shall be attached, except for that indicated in subparagraph a) of the preceding paragraph.

The application and the documents accompanying it shall be received by the Register and shall enjoy a guarantee of confidentiality for a maximum time limit of eighteen months, counted from the date of filing of the application, or else, from the date of the priority claimed, as the case may be.

The Registry shall record the date and time of filing on the patent application, shall assign it a file number and shall deliver to the applicant a receipt for the application and for the documents submitted.

Without prejudice to the provisions of Article 113 of this Law, the Registry shall proceed in accordance with the preceding paragraph, even if the application does not contain all the information or all the documents referred to in the preceding articles are not attached, provided that it meets at least the following requirements:

a)It clearly states that a patent is sought;

b)It contains information that permits identification of the inventor, the applicant and the representative of the latter, where applicable, and indicates an address for receiving notifications; and

c)It is accompanied by a copy of the description of the invention, of any applicable drawings and proof of payment of the established fee.

A patent application may only comprise one invention, or a group of inventions linked to each other so as to form a single inventive concept.

The description shall disclose the claimed invention in a sufficiently clear and complete manner, so that a person skilled in the corresponding technical field can carry it out. The description shall also disclose the best mode known to the applicant for carrying out the claimed invention.

An invention that is the subject of a bridge application shall be sufficiently supported in its filing when an expert in the corresponding technical field can reasonably confirm that the patent applicant possessed the invention on the filing date of its application, or at least on the filing date of the priority application. *Amended by Article 55 of Decree of Congress Number 11-2006 of 30-05-2006

When the invention relates to a product or to a procedure relating to a biological material, which is not available to the public and the invention cannot be described in such a manner that it can be understood and be carried out by a person skilled in the technical field, the description shall be supplemented by the deposit of a sample of said material.

The deposit of the sample of the biological material shall be made in a deposit institution established within or outside the country and recognized in accordance with the treaties or agreements to which the Republic of Guatemala is a party, no later than the filing date of the application or, when a right of priority is invoked, on the filing date of the priority application.

When a deposit of biological material has been made for the purposes of a patent application, this shall be indicated in the description together with the name and address of the deposit institution, the date of the deposit and the deposit number assigned by the institution. The nature and characteristics of the deposited material shall also be described when this is necessary for purposes of the disclosure of the invention.

The deposit of biological material shall only be valid for purposes of the grant of a patent if it is made under conditions that allow any interested person to obtain samples of said material, no later than as from the date of publication of the corresponding patent application. *Amended by Article 56 of Decree of Congress Number 11-2006 on 30-05-2006

Drawings shall be submitted when necessary to understand or carry out the invention. The drawings shall be considered part of the description.

The claims shall define the invention sought to be patented, in a clear, precise, concrete and complete manner and must be entirely supported by the description.

In the claims the phrase "comprising" allows the possibility of including within the scope of a claim unspecified ingredients or elements even in greater quantities; the phrase "consists of" closes the possibility of including ingredients or elements in addition to those recited, with the exception of normal impurities; and the phrase "consists essentially of" allows the possibility of including in a claim only unspecified ingredients or elements that do not materially affect the basic and innovative characteristics of the invention.

Claims shall be formulated observing the following rules:

a)Their number shall correspond to the nature of the claimed invention;

b)They may be presented in independent or dependent form;

c)Dependent claims shall include by reference all the limitations of the claims on which they depend and specify the additional limitations that maintain a consistent relationship with the related independent or dependent claim or claims;

d)Those dependent on two or more claims may not serve as a basis for any other claim in turn dependent on two or more claims;

e)When several claims are presented, they shall be identified with Arabic numerals;

f)They shall not contain references to the description or to the drawings, except where absolutely necessary; and

g)In the event that the application includes drawings, the technical features mentioned in the claims may be followed by reference signs relating to the corresponding parts of such features in the drawings, if they facilitate understanding of the claims, such reference signs to be placed in parentheses.

The abstract shall comprise a synthesis of the technical disclosure contained in the description of the patent application and the principal use of the invention. It shall include, where there is one, the chemical formula or the drawing that best characterizes the invention.

The abstract shall serve for purposes of technical information and shall have no effect whatsoever for interpreting the scope of the protection conferred by the patent; consequently, the Register may, on its own initiative and without any prejudice to the applicant, make thereto the clarifications and/or expansions it deems appropriate with the sole purpose of conforming it to what is stipulated in this article.

The Registry shall examine whether the application complies with the requirements of Articles 103 and 105 of this Law. If any omission or deficiency is observed, and within a time limit not exceeding one (1) month counted from the filing date of the application, the Registry shall require the applicant to make the necessary correction or submit the omitted documents. If the applicant does not comply with what was required within a time limit of three (3) months counted from the date of the notification, it shall be deemed abandoned. *Amended by Article 57 of Decree of Congress Number 11-2006 of 30-05-2006

Upon expiry of the time limit of eighteen months counted from the filing date of the patent application or, where a right of priority has been invoked, from the applicable priority date, the Registry shall order that the application be published by issuing the corresponding edict. Nevertheless, upon prior written request of the applicant, the Registry may order publication of the application before the established time limit elapses. Publication of an application that has been subject to withdrawal or abandonment shall not be ordered.

The edict shall be published in the Official Bulletin of the Registry of Intellectual Property - BORPI - a single time, at the expense of the interested party, within the six months following its delivery. If publication of the edict is not effected, the application shall be deemed abandoned.

From the day following the date of publication of the edict, or the date of expiry of the time limit established in the third paragraph of Article 105 of this Law, whichever occurs first, the corresponding file may be consulted by any interested person for information purposes, unless withdrawal of the application has previously been filed and approved. *Amended by Article 3, third paragraph, of Decree Number 24-2018 of 15-11-2018

The edict referred to in the preceding article shall contain:

a)The number of the application;

b)The filing date of the application;

c)The name and domicile of the applicant and of the inventor;

d)The name of the representative of the applicant, if any;

e)The country or office, date and number of each application whose priority has been claimed;

f)The classification symbol or symbols, where they have been assigned;

g)The name of the invention;

h)The abstract, in accordance with Article 112 of this law;

i)A representative drawing of the invention, if any, selected by the Registry; and

j)Date and signature of the Registrar or of the public official of the Registry whom the Registrar designates for such purpose.

Any person may, within the three months following the publication of the edict, submit in writing before the Registry observations with respect to the patentability of the invention, including information or documents they deem pertinent.

The Registry shall notify the patent applicant of the observations submitted so that, within the time limit of the following three months, they may comment thereon and submit the information and documentation they deem pertinent.

The filing of observations shall not suspend the processing of the application. Whoever files them shall not thereby become a party to the procedure and, once the patent has been granted, shall likewise not be precluded from filing a nullity action against it.

Three months after the date of publication of the edict, or after the observations filed have been notified to the patent applicant, if applicable, the Registry shall proceed to set the corresponding fee to cover the substantive examination, which shall be paid within the month following the date of the notification to the applicant of the respective payment order, otherwise the application shall be deemed abandoned.

Subsequently, it shall proceed to carry out the substantive examination of the application, upon submission by the applicant of proof of payment of the fee set, which shall have as its purpose to determine whether the claimed invention complies with the provisions of Articles 91, 92, 93, 94, 95, 96, 97, 98, 107, 108, 109, 110 and 111 of this Law, as well as the provisions of Article 104, when pertinent.

The examination may be carried out by personnel of the Registry, by independent technicians or by public or private entities. The independent technicians or public or private entities that carry out the examination at the request of the Registry may be national or foreign.

The Regulations of this Law shall regulate the requirements and procedures for the contracting of independent technicians or private entities for the performance of the examination established in this article, which ensure the suitability of the examiner and the transparency of the process, giving interested parties the opportunity to know the contracting criteria, which may be opposed through the corresponding administrative remedies,

When carrying out the substantive examination, the information provided by the applicant or, as the case may be, by whoever has filed observations shall be taken into account, including matters relating to the search report conducted by the examiner, as well as the novelty or patentability examinations carried out by other industrial property offices and referring to the same subject matter of the application. The Registry may consider the results of such examinations sufficient to establish compliance with the patentability conditions of the invention.

The question of whether an invention is patentable or not for lack of novelty or inventive step shall be decided on a case-by-case basis as appropriate, considering the pertinent facts such as, for example, inter alia:

a)The scope and content of the state of the art;

b)The differences between the state of the art and the claim;

c)The level of ordinary skill in the pertinent art; and

d)Appropriate secondary factors such as commercial success, long-felt but unmet needs, the failure of others and unexpected results. *Amended by Article 58 of Congressional Decree Number 11-20060 of 30-05-2006; *Amended by Article 26 of Decree Number 3-2013 of 26-06-2013.

For purposes of substantive examination, the Registry may require the applicant to file, within a time limit of two months counted from the respective notification, extendable by one more month in cases qualified by the Registry, an uncertified copy with plain translation of any material contained in a foreign administrative or judicial file, related to the pending application, including, inter alia:

a)The application itself;

b)The results of novelty or patentability examinations;

c)The patent or other title of protection that may have been granted;

d)Any decision or judgment by which the application or patent may have been rejected, denied or granted; and

e)Any decision or judgment in which the granted patent or other title of protection has been revoked, annulled, invalidated or cancelled.

At the request of the applicant, or on its own initiative, the Registry may suspend processing of the patent application where any document to be filed by the applicant, pursuant to this article, has not been issued in the country in question.

The applicant may formulate such observations and comments as he/she deems relevant regarding the information or documents he/she provides.

If upon substantive examination it appears that prior to grant of the patent it is necessary to complete the documentation filed, to correct, amend or divide the application, the Registry shall notify the applicant so that, within the following three months, he/she complies with what is required or files the comments or documents that may be appropriate in support of the application. At the request of the interested party an extension for three additional months shall be granted. Upon expiry of the time limit or its extension, whether or not the applicant has responded, the Registry shall decide on the patent application in accordance with the provisions of this Law. *Amended by Article 59, of Decree of Congress Number 11-2006 of 30-05-2006; *Amended by Article 27, of Decree Number 3-2013 of 26-06-2013.

Once the procedures and requirements established by this law have been completed, the Registry shall decide on the patent application. If it is rejected in whole or in part, the respective decision shall contain the reasons and legal grounds for such rejection.

If the patent is granted partially, the Registry shall order in the decision itself that the applicant file, within three (3) months following the statement of grounds of the decision, the document relating to the claims, in accordance with the approval.

The registration shall contain:

a)The file number;

b)The filing date of the application;

c)The name and domicile of the applicant and of the inventor;

d)The classification symbol or symbols, where assigned;

e)The name of the invention;

f)A summary, in the terms established by Article 112 of this law;

g)A representative drawing of the invention, if any, selected by the Registry;

h)The country or office, date and number of the applications whose priority was claimed; and

i)The signature and seal of the Registrar. *Amended by Article 60 of Decree of Congress Number 11-2006 of 30-05-2006

Once registration of the patent has been effected, the Register shall issue the corresponding certificate which shall contain the registration data, adding thereto a copy of the description, the claims, the drawings and the abstract. The certificate shall also contain express mention that the patent is granted without prejudice to the better right of a third party and under the exclusive liability of the applicant.

Applications may be divided at the applicant's request, or at the requirement of the Registry when they do not conform to the provisions of Article 107 of this Law. All fractional applications shall have the same filing and priority date, if claimed, as the initial application from which they derive, provided that their subject matter is contained within the latter.

None of the fractional applications may broaden the disclosure contained in the initial application, if that would entail broader protection than that which would correspond to the initial application.

For purposes of division of the application, the applicant shall submit:

a)The descriptions, claims, drawings and summary corresponding to each part of the invention; and

b)Proof of payment of the corresponding fee.

It shall not be necessary to prove standing to act anew in the division application, nor to submit the documentation relating to priority, if it was attached to the initial application. The applicant's signature on the division application shall be legalized by a notary.

The applicant may modify or correct the application at any time during the proceedings, but this may not entail an expansion of the claims contained in the initial application, if this would entail greater protection than that corresponding to the initial application. Some of the claims may also be eliminated by means of the modification.

The modification or correction of the application must be submitted in writing, with signature legalized by notary and must be accompanied by the corresponding documentation and proof of payment of the respective fee.

The applicant for an invention patent may request that their application be converted into a utility model patent application and be processed as such. Conversion of the application shall proceed only where the nature of the invention or of the innovation so permits. The applicant for a utility model patent may request that their application be converted into an invention patent application.

A request for conversion of an application may be filed only once, at any time during the proceedings, and shall incur the established fee. A converted application shall retain the filing date of the initial application.

The owner of a patent may request at any time that any material error or omission incurred in the patent certificate or in the registration be corrected. The correction shall have legal effects against third parties from the time it is recorded in the registration and it shall not be necessary to publish it.

No correction or expansion of the disclosure contained in the initial application nor of the accepted claims shall be admitted if it would entail greater protection than that which would correspond to the initial application.

The request for correction must identify and prove the existence of the error or omission and, once it has been established, the corresponding annotation shall be made, upon prior payment of the respective fee, unless it is an error attributable to the Registry.

The right in a patent or a patent application may be alienated by act inter vivos or transferred by succession.

If the holder of the patent changes name, corporate name or denomination, for any cause, said change must be recorded in the registration of the patent. The change of name must be proved with the corresponding documentation, the provisions of paragraph one of this article being applicable.

For the alienation or the change of name of the holder to have effect against third parties, it must be entered in the register. The request for registration of the transfer or for the recording of the change of denomination or name of the holder of the patent or of the applicant may be filed by the holder of the patent or by the applicant therefor, by the new holder or by their representatives jointly or by only one of the parties.

The invention patent shall be in force for a term of twenty years, counted from the filing date of the respective patent application.

Once the patent has been granted, its holder may request that the Registry adjust the term of validity established in the preceding article, if either or both of the following cases occur and are due to causes not attributable to the applicant:

a)When, during the processing of the patent application, the Registry incurs an unjustified delay. For such purpose, an unjustified delay shall exist when the Registry issues the patent within a time limit of more than five years from the filing date of the patent application, or within a time limit of more than three years from the date on which the interested party requested substantive examination, whichever is later; or,

b)When the patent refers to a pharmaceutical product and the corresponding administrative authority issues the authorization to commercialize the product within a time limit of more than one year from the filing date of the application for authorization to commercialize.

The Industrial Property Registry shall compensate the term of validity of the patent, one day for each day of delay, according to the time limits established in subparagraphs a) and b). Nevertheless, the term of the patent may only be adjusted by a maximum period of eighteen months in the case of item a) and of one year in the case of item b). Periods of time attributable to actions of the applicant shall not be included in the determination of delays and in the compensation of the term of validity of the patent. In the case of the ground in preceding item a), the Registry shall decide the request within a time limit of no more than three months; in the case of the ground in preceding item b), the time limit shall be four months. In the case of said item b), upon request of the Registry, the competent regulatory authority shall provide the information that allows evaluation and decision of the request.

The term provided for in Article 126 of this Law may only be adjusted within the time limits expressly provided for in this article. *Amended by Article 28 of Decree Number 3-2013 of 26-06-2013.

The scope of the protection conferred by the patent shall be determined by the claims. These shall be interpreted taking into account the description, the drawings and the provisions of paragraph two of Article 111 of this law.

The patent confers on its owner the right to prevent third persons from exploiting the patented invention. To that effect, the patent owner may proceed through the applicable legal means against any person who without its consent performs any of the following acts:

a)Where the patent claims a product:

i.Produce or manufacture the product; or ii. Offer the product for sale, sell or use the product; or import it or store it for any of these purposes;

b)Where the patent claims a procedure:

i.Employ the procedure; or ii. Perform any of the acts indicated in subparagraph a) above with respect to a product obtained directly from the procedure.

The rights established in Article 35 of this Law, insofar as pertinent, shall correspond to the owner of a patent.

Where the patent protects a biological material possessing certain claimed characteristics, the protection shall also extend to any biological material derived by multiplication or propagation from the patented material and possessing the same characteristics. Except as established in the following paragraphs, where the patent protects a procedure for obtaining a biological material possessing certain claimed characteristics, the protection provided for in Article 128, literal b), item ii) shall also extend to all biological material derived by multiplication or propagation from the material directly obtained from the procedure and possessing the same characteristics.

Where the patent protects a specific genetic sequence or a biological material containing such sequence, the protection shall also extend to any product that incorporates that sequence or material and expresses the respective genetic information.

Where the patent protects a plant, an animal or another organism capable of reproduction, the holder may not prevent third parties from using that entity as an initial basis to obtain a new viable biological material and to commercialize the material so obtained, unless such obtaining requires the repeated use of the patented material.

Where the patent protects a plant or an animal or its material for reproduction or multiplication, the holder may not prevent the use of the product obtained from the protected plant or animal for its further reproduction or multiplication by a farmer or livestock breeder; and the commercialization of that product for agricultural-livestock use or for consumption, provided that the product was obtained on the own holding of that farmer or livestock breeder and that the reproduction or multiplication is carried out on that same holding.

The patent shall not give its holder the right to prevent the following acts with respect to the patented invention:

a)Acts carried out in the private sphere;

b)Acts carried out exclusively for experimental purposes;

c)Acts carried out for teaching or scientific or academic research purposes; and

d)Acts carried out for the purpose of generating the information necessary to support an application to market a pharmaceutical or agricultural chemical product in Guatemala

e)Acts referred to in Article 5 ter of the Paris Convention for the Protection of Industrial Property

The product manufactured in accordance with the provisions of subparagraph (d) of this article shall not be made, used, marketed or sold, except to generate the information related to compliance with the requirements to approve the product once the patent expires.

The limitations to the rights conferred by the patent established in this article shall not unreasonably affect the normal use of the patent nor cause undue prejudice to the interests of its holder. *Amended by Article 62 of Decree of Congress Number 11-2006 of 30-05-2006

The patent shall not confer the right to prevent a third party from carrying out commercial transactions with respect to a product protected by the patent or obtained by a patented procedure, after that product has been introduced into commerce in any country by the holder of the patent or by another person with the consent of the holder or economically linked to him.

For the purposes of the preceding paragraph, it shall be understood that two persons are economically linked when one may exercise directly or indirectly over the other a decisive influence with respect to the exploitation of the patent, or when a third party may exercise such influence over both persons.

Where the patent protects biological material capable of reproducing, the patent shall not extend to the material obtained by multiplication or propagation of the material introduced into commerce in accordance with the first paragraph, provided that the multiplication or propagation is a necessary consequence of the use of the material in accordance with the purposes for which it was introduced into commerce, and that the material derived from such use is not used for purposes of multiplication or propagation.

The holder of a patent may grant a license for the exploitation of the patented invention. The registration of the contractual license in the Register is not mandatory, but it shall only have legal effects against third parties from registration. The exploitation of the patent by the licensee whose license is registered in the Register shall be considered for all legal purposes as carried out by the holder itself.

The application for registration of the license shall contain:

a)The name, business name or denomination of the registered holder and of the licensee and their addresses;

b)Identification of the patent subject matter of the license and indication of its register; and

c)Time limit, exclusivity, territory and other essential stipulations.

The application shall be accompanied by a copy of the license contract or a summary thereof, signed by the parties, containing the information referred to in the preceding paragraph, and proof of payment of the corresponding fee. If the license contract or the summary thereof was not executed in Guatemala, the document must be duly legalized and with a sworn translation into Spanish, if applicable.

If the application complies with what is established in this law, the license shall be recorded without further proceedings in each of the patents subject matter thereof and the Register shall issue the corresponding certificate.

Unless otherwise stipulated, the following rules shall apply to patent licenses:

a)The license shall extend to all acts of exploitation of the invention, during the entire validity of the patent, in the entire territory of the country and with respect to any application of the invention;

b)The licensee may not transfer the license nor grant sublicenses;

c)The license shall not be exclusive, the licensor being able to grant other licenses for the exploitation of the patent in the country, as well as to exploit the patent by itself in the country;

d)Where the license has been granted as exclusive, the licensor may not grant other licenses for the exploitation of the patent in the country, nor may it exploit the patent by itself in the country; and

e)The exclusive licensee may itself exercise the legal actions for protection of the patent, as if it were the owner thereof, if the license is registered.

Clauses of a license contract shall be void where they have the purpose or the effect of unduly restricting competition or imply an abuse of the patent.

For reasons of public interest and in particular for reasons of national emergency, public health, national security or non-commercial public use, or to remedy any anticompetitive practice, after a prior hearing of the interested party, the Registry may, at the request of the authority or of an interested person, order at any time:

a)That the invention that is the subject matter of a patent or of a pending patent application be used or exploited industrially or commercially by a State entity or by one or more persons governed by public law or private law designated for such purpose; or

b)That the invention that is the subject matter of a patent or of a pending patent application be left open to the grant of one or more compulsory licenses, in which case the competent national authority may grant such license to whoever requests it, subject to the established conditions.

Where the patent protects any semiconductor technology, compulsory licenses shall only be granted for non-commercial public use, or to rectify a practice declared contrary to competition in the applicable procedure.

The person requesting a compulsory license shall prove having previously requested a contractual license from the patent holder, that it has not been possible to obtain it on reasonable commercial terms and conditions, and that such attempts had no effect within a time limit that shall be no less than ninety days following the first request. Compliance with this requirement shall not be necessary in the case of a compulsory license in cases of national emergency, extreme urgency or non-commercial use of the invention by a public entity. In both cases the patent holder shall be informed without delay of the grant of the license.

The application for a compulsory license shall indicate the conditions under which it is intended to obtain the license and, together therewith, shall be accompanied by the documentation justifying the grant of the license and the technical and economic capacity of the applicant to adequately exploit the patent. Such evidence shall not be necessary in the cases and situations referred to in the second part of the preceding paragraph.

The patent holder shall be given a hearing on the application for a time limit of one month and, with or without its answer, the Register shall decide on whether or not to grant the license.

The decision of the Register granting a compulsory license shall contain:

a)The scope of the license, including its validity and the acts for which it is granted, which shall be limited to the purposes that motivated it;

b)The amount and form of payment of the remuneration owed to the patent holder; and

c)The conditions necessary for the license to fulfill its purpose.

The following are necessary conditions relating to the granting of the compulsory license, among others:

a)The compulsory license shall be granted mainly to supply the domestic market;

b)The owner of the patent subject to a compulsory license shall receive adequate remuneration, according to the circumstances of the case and the economic value of the license. In the absence of agreement between the parties, the Register shall fix the amount and form of payment of the remuneration, for which it may additionally take into account information it gathers on the average of royalties established in the same sector in license contracts concluded between third parties; and

c)A compulsory license may not be granted on an exclusive basis, may not be assigned nor sub-licensed and may only be transferred with the enterprise or establishment, or with that part thereof, that exploits the license.

At the request of the patent owner, the Register may cancel the compulsory license if the circumstances that gave rise to its granting have disappeared and are unlikely to recur, for which it shall take the necessary measures to protect the legitimate interests of the licensees. For such purpose, in addition to the evidence provided by the patent owner, the Register shall gather such information as it deems necessary to verify those facts.

Against the decisions issued by the Register relating to the granting or revocation of a compulsory license and the conditions thereof, including the remuneration to be paid to the patent owner and any modification of such conditions, the remedies referred to in Article 13 of this Law may be filed, which must be processed and decided with absolute priority.

If the compulsory license is granted to remedy or eliminate practices that as a result of judicial or administrative proceedings have been determined to be anticompetitive, the provisions contained in paragraph one of Article 134 of this Law shall not be applicable. In this case, in determining the remuneration of the patent owner, account shall be taken of the fact that the purpose of the license is to put an end to anticompetitive practices. Likewise, revocation of the license may be denied if it is likely that the conditions that gave rise to the granting thereof will recur.

Where a compulsory license is requested to permit the exploitation of a later patent ("second patent") that could not be exploited without infringing another earlier patent ("first patent"), the following additional conditions shall be observed:

a)The invention claimed in the second patent must constitute a relevant technical advance of considerable economic importance with respect to the invention claimed in the first patent;

b)The compulsory license to exploit the first patent may only be transferred with the second patent; and

c)The holder of the first patent shall be entitled to a license under the second patent, on reasonable terms to exploit the invention that is the subject matter of the second patent.

A compulsory license may be revoked by the Register in whole or in part, at the request of any interested person, if the licensee fails to comply with the obligations incumbent upon it, or in the case provided for in paragraph two of Article 136.

A compulsory license may be modified by the Register, at the request of any interested person, when new facts or circumstances justify it or, in particular, when the patent holder has granted contractual licenses on more favorable conditions than those agreed with the licensee.

The patent shall be void in any of the following cases:

a)When the material that is the subject matter of the patent cannot be patented; or

b)When the patented invention fails to comply with the requirements of novelty, inventive step and industrial application. *Amended by Article 63 of Decree of Congress Number 11-2006 of 30-05-2006

The patent may be canceled in case of fraud when it has been granted to a natural person or legal person who was not entitled thereto.

These cancellation proceedings may only be initiated by the natural person or legal person who by law is entitled to the patent. *Amended by Article 64 of Decree of Congress Number 11-2006 of 30-05-2006

When the grounds for nullity or cancellation relate to one or more patent applications, the effects of the court order shall not affect the remaining patents. *Amended by Article 65 of Decree of Congress Number 11-2006 on 30-05-2006

The patent is extinguished in the following cases:

a)Upon expiry of the time limit;

b)Upon renunciation of the patent by the holder; and

c)Upon failure to timely pay an annuity or, as applicable, the surcharge for late payment thereof.

Extinction operates by operation of law in the cases mentioned in items a) and c) of the preceding paragraph, with effect from the day following that on which the corresponding time limit expired, or that of the grace period, as the case may be.

The invention that is the subject of a patent that for any reason has been extinguished, or of a published application that had been abandoned, shall pass into the public domain.

The holder of the patent may at any time renounce one or several of the claims of the patent, or the patent in its entirety, by a written document with signature authenticated by a Notary and filed with the Register.

The renunciation shall take effect as of the date of its filing, without prejudice to the provisions of the third paragraph of this article.

The renunciation shall be notified to any person who has registered in his favor any security right or ownership restriction with respect to the patent. In this case, the Register shall neither admit nor approve the renunciation, except after the consent of such third parties has been reliably evidenced.

The renunciation of one or more claims does not cause the extinguishment of the patent, but only the extinguishment of the holder's right to the subject matter of that claim or those claims.