RESTRICTEDWORLD TRADE
ORGANIZATIONIP/C/W/269/Add.2
25 July 2001
(01-3686)
Council for Trade-Related Aspects
of Intellectual Property RightsOriginal:  Spanish
REVIEW OF LEGISLATION
Replies by Costa Rica to Questions Posed by Canada and the European Communities
and their Member States
Addendum
By means of a communication from the Permanent Mission of Costa Rica, dated
18 June 2001, the Secretariat has received the following replies to the additional questions posed by
Canada and the European Communities and their Member States, circulated in documents
IP/C/W/261/Add.1 and 274 respectively.
_______________
CANADA1
3. We understand that draft legislation concerning the protection of plant varieties is
before the Costa Rican Legislative Assembly.
(a) When is it likely to be effectively implemented?
Regarding plant varieties, it should be noted that the Executive has submitted a draft law on
the protection of plant varieties to the Legislative Assembly.  This draft law is not only a response to
Costa Rica's commitments under the TRIPS Agreement, but meets an obvious need for legislation in
support of the efforts made by public and private institutions involved in the breeding of new varieties
through genetic improvement programmes.
The text used as a basis for discussion was drawn up on the basis of the model law of the
UPOV Convention of 1991.  In addition, a draft law amending the Law on Seeds is also in the
legislative pipeline, giving the National Seeds Office the authority to register new plant varieties.
The draft law is in the legislative pipeline and is being examined by a Special Intellectual
Property Commission, composed of Deputies, representatives of the Executive and other interested
parties, with a view to examining and improving th e text proposed.  The Government of Costa Rica is
confident that the examination of the draft law will lead to a consensus text to be approved by the
Legislative Assembly before the end of the current Government's term of office, i.e., May 2002.
(b) What are the key improvements introduced by this draft legislation in respect of TRIPS
obligations?
                                                     
1 These replies are to be added to the two replies to questions posed by Canada and circulated in
document IP/C/W/269.IP/C/W/269/Add.2
Page 2
Pursuant to Article 27.3(b) of the TRIPS Agreement, Costa Rica must provide for the
protection of plant varieties, either by patents or by an effective sui generis  system or by any
combination thereof.
Nevertheless, Article 65.4 of the TRIPS Agreement allows a developing country Member
obliged to extend patent protection to areas of technology not so protectable in its territory on the
general date of application of the Agreement to delay application, so Costa Rica can postpone
application of the protection of plant varieties for an additional period of five years, in other words, up
to 2005.  This is quite clear, subject to the application of Articles 3, 4, and 5 of the TRIPS Agreement.
In this connection, the draft law transmitted to the Legislative Assembly by the Executive
implements the obligations under the TRIPS Agreem ent, taking into consideration the model law of
the UPOV Convention, according to the Act of 1991.
The following are some of the most relevant aspects of this draft law:
• The requirements of novelty, distinctness, uniformity, stability and an appropriate
denomination are laid down as conditions for the protection of plant varieties;
• the persons who have the right to request protection are determined;
• the scope of the breeder's right is specified;
• the minimum period of protection is 25 years for trees and vines and 20 years for all other
plants;
• the possibility of granting contractual or compulsory licences is covered.
It is important to note that this draft law is still under discussion in the Legislative Assembly
by a Special Intellectual Property Commission established for this purpose.  The Commission may
make the amendments it deems necessary in order to obtain a consensus text that meets Costa Rica's
relevant multilateral obligations.
4. We understand that Regulations implementing Law No. 8039 of 12 October 2000 on
intellectual property right enforcement pro cedures are expected to enter into force in
October 2001.
(a) Please provide an update of the status of these Regulations.
The Government of Costa Rica is pleased to in form you that the Regulations of Law No. 8039
on Procedures for the Enforcement of Intellectual Property Rights, of 12 October 2000, have recently
been revised and approved by the Office of the Attorney-General of the Republic.  Consequently,these Regulations will soon be published following th e necessary legal procedures for their entry into
force.
(b) What are the key improvements introduced by this Law and Regulations in respect of
TRIPS obligations?
The Law on Procedures for the Enforcement of Intellectual Property Rights introduces
important provisions that protect the holders of intellectual property rights through the establishment
of preventive measures, border measures, administrative proceedings and civil and criminal
proceedings, as required by the commitments in the TRIPS Agreement.IP/C/W/269/Add.2
Page 3
The most relevant aspects of these provisions are as follows:
• Protection of intellectual property right holders by means of the necessary rules on
preventive measures (including those applied by the customs).
• Preventive measures can be applied by the administrative or judicial authorities,
provided that the applicant can prove that he is the right holder or his representative.
The competent authorities will require security from the applicant sufficient to
protect the alleged infringer and prevent abuse.
• Requirement to grant a hearing on the application of preventive measures, unless this
might render them ineffective;  however, where a preventive measure has been
imposed without a hearing, the authority shall notify the party concerned within threeworking days of its imposition, at the latest.
• The applicant must file an administrative  complaint or initiate legal proceedings
within one month of notification of the decision ordering the preventive measure.
• The right holder may request the administrative or judicial authorities to order the
customs authorities to suspend importation or exportation at the time of clearance;however, he must prove that he is the right holder or his representative, provide
security and supply the necessary information and a description of the goods so thatthey are readily identifiable by the customs authorities.
• The customs authorities must act ex officio and suspend clearance of the goods if
there is a presumption that they infringe an intellectual property right.  The authoritiesmust report the commission of the offence to the Public Prosecutor's Office within
24 hours of retaining the goods.
• The judicial authorities may order the customs authorities to destroy or dispose of the
infringing goods.
• Protection of injured parties in the event of wrongful detention of the goods.
• Establishment of an Administrative Registration Court which will exhaust the
administrative remedies and hear appeals against decisions taken by the Industrial
Property Register and the National Regi ster of Copyright and Related Rights.
• Provision for the holding of summary civil intellectual property proceedings.
• Prison sentences of up to three years for offences against intellectual property rights.
Moreover, as regards the Regulations of Law No. 8039 – as indicated in the previous reply,
the draft was recently approved by the Attorney-Gen eral of the Republic – the following are some of
the main provisions:
• Definition of the content of an application for a preventive measure.
• Provisions on the procedure for and imposition of preventive measures and border
measures and on the cessation of their effects.
• Provisions on administrative procedures in relation to undisclosed information.IP/C/W/269/Add.2
Page 4
• Definition of the content of applications for layout-designs of integrated circuits.
• Authority to submit appeals for annulment and other appeals against any decisions
taken by the Industrial Property Register and the National Register of Copyright and
Related Rights.
EUROPEAN COMMUNITIES AND THEIR MEMBER STATES
A. GENERAL PROVISIONS
1. Please describe if your legislation includes measures necessary to protect public health
and nutrition, and to promote the public interest in sectors of vital importance to your
socio-economic and technological development as mentioned under Article 8 of the TRIPS
Agreement.  If yes, please explain how such measures are consistent with the provisions of theTRIPS Agreement.
Pursuant to Article 8 of the TRIPS Agreement and to the extent allowed by Article 27.2
thereof, paragraph 4(a) of Article 1 of Law No. 6867 of 25 April 1983 and its amendments determines
that inventions whose commercial exploitation must objectively and necessarily be prevented in orderto protect health shall be included among the exceptions to patentability.
To date, the Industrial Property Register has not applied this exception to any application for
registration of a patent.
One of the innovations introduced into Costa Rican legislation by Law No. 7975, the Law on
Undisclosed Information of 4 January 2000, is the regulation of cases where undisclosed test or other
data must be submitted as a condition of the approval of the marketing of pharmaceutical or
agricultural chemical products;  such data shall be protected against any unfair commercial use and
any disclosure, in accordance with the provisions  of Article 8 of the aforementioned Law No. 7975.  It
should be noted that this Article also establishes that, in the case of studies covered by the regulations
on the registration of drugs or agricultural chemical products, the competent authorities may use test
data without disclosing the information protected in order to prevent practices that may mislead
consumers or to protect human, animal or plant health, for the purpose of preventing the abuse of
intellectual property rights or the resort to practices that unreasonably restrain trade.
The competent authorities are currently workin g on the regulations for implementation of this
legislation.  One of the aspects to be covered in the regulations in question is the need for further
details on the scope of Article 8 of the aforementioned Law.
B. 
COPYRIGHT AND RELATED RIGHTS
2. Please state how your legislation provides for the protection of the exclusive rights of
authors in relation to their literary and artistic  works, as specified in Article 9 of the TRIPS
Agreement which requires members to comply with Articles 1-21 of the Berne Convention and
the Appendix to the B erne Convention (1971).
First of all, the Berne Convention for the Protection of Literary and Artistic Works was
adopted in Costa Rica as Law of the Republic No. 6083 of 29 August 1977.
Furthermore, the Law on Copyright and Re lated Rights, Law No. 6683 of 14 October 1982
and its amendments, implements the obligations derived from Article 9 of the TRIPS Agreement.IP/C/W/269/Add.2
Page 5
In particular, Articles 1 to 21 of the Berne Convention, except for Article 16, have been
incorporated into Costa Rican legislation by m eans of Articles 1 to 76 of the above-mentioned
Law No. 6683, while Article 16 of the Berne Convention has been incorporated through the
provisions of Articles 41 and 71 of the Law on Procedures for the Enforcement of Intellectual
Property Rights, Law No. 8039 of 12 October 2000.
3. Please describe the protection accorded to authors of computer programs, databases or
compilations of data.
Article 1.2 of the Law on Copyright and Related Rights, Law No. 6683 of 14 October 1982
and its amendments, states that "'literary and artistic works' shall be taken to mean all productions in
the literary and artistic domain, whatever the form of expression thereof, such as: … computerprograms, including successive versions thereof and derived programs".
In addition, Article 8 of the aforementioned Law No. 6683 protects databases as compilations.Regarding the term of protection of these rights, Article 58 of the aforementioned Law
provides that the author's rights last throughout his lifetime.  After the author's death, persons who
have lawfully acquired the rights may utilize them for a period of 70 years.
4. Please state whether your legislation provides for a rental right and, if so, the works to
which it applies.
Article 16 of the Law on Copyright and Rela ted Rights, Law No. 6683 of 14 October 1982
and its amendments, states that the author of a literary or artistic work shall have the exclusive right to
use it.
Article 16(g)  provides that the exclusive rights  of the author include the right of distribution,
while Article 4(p) of the same Law No. 6683 establishes the scope of this right, including making the
original or copies of the work or phonogram available to the public through rental.
In addition, Article 82(c) of the aforementioned Law No. 6683 provides that the producers of
phonograms or videograms have the exclusive right to authorize or prohibit the commercial rental to
the public of the originals or copies.
Lastly, Article 86 of Law No. 6683 provides that the rights of broadcasting organizations
include the right to authorize or prohibit communication to the public of their television broadcasts in
premises open to the public.  The scope of the rights of distribution is covered by Article 4(p) of this
Law.
5. Please describe the rights granted to performers, producers of phonograms (sound
recordings) and broadcasting organizations under your legislation.
Articles 77 et seq. of the Law on Copy right and Related Rights, Law No. 6683 of
14 October 1982 and its amendments, establish provisions relating to the protection of performers.  In
particular, Article 78 states that performers or their agents, heirs, successors or assignees, having
acquired their status free or for a consideration, shall have the right to authorize or prohibit the
fixation, reproduction, communication to the public, transmission or retransmission by radio or
television or any other form of use of their performances.
Article 82 of the aforementioned Law No. 6683 provides that producers of phonograms or
videograms have the exclusive right to authorize or prohibit:
• Direct or indirect reproduction of their phonograms or videograms.IP/C/W/269/Add.2
Page 6
• The first public distribution of the original and each copy of the phonogram by means
of sale, rental or any other means.
• Commercial rental to the public of the originals or copies.
• Import of copies of the phonogram made without the producer's authorization.
• Transmission and retransmission by radio or television.
• Public performance by any means or form of use.
• Making their phonograms available to the public by wire, cable, optic fibre,
radioelectric waves, satellite or any other similar means that gives the public access to
or remote communication of protected works from the place and at the time they
choose.
Lastly, Article 86 of Law No. 6683 provides that broadcasting organizations have the right to
authorize or prohibit the fixation or reproduction of their broadcasts, the retransmission, subsequent
distribution and communication to the public of their television broadcasts, in premises open to the
public.
6. Please state whether your legislation provides  for any limitation or exception in relation
to each of the rights described above in acco rdance with the relevant provisions of the Berne
and Rome Conventions and in light of Articles 13 and 14.6 of the TRIPS Agreement.
Firstly, it is important to note that Costa Rica has not submitted to the WIPO any restriction
on the protection of owners of intellectual creations pursuant to Article 6 of the Berne Convention norunder Article 16 of the Rome Convention.
Regarding limitations or exceptions in Costa Rican  legislation relating to copyright or related
rights, there are some relevant provisions and they are all in conformity with Articles 13 and 14.6 of
the TRIPS Agreement.
For example, Articles 67 et seq. of the La w on Copyright and Related Rights, Law No. 6683
of 14 October 1982 and its amendments, establishes certain exceptions to protection, including the
following:
• News having the character of items of press information;
• articles on current affairs published in magazines or periodicals may be reproduced
unless expressly prohibited, but the source must be mentioned;
• speeches delivered in deliberative assemblies or at public meetings, and also
pleadings before the courts may be published in the periodical press, broadcast on
radio or television, without any authorization.  They may not, however, be published
as separate editions or in a collection without the consent of the author;  and
• reproduction by photographic or other pictorial processes of statues, monuments and
other works of art acquired by the authorities and displayed in streets, parks andmuseums.
7. Please state the terms of protection of each right described above and the work or
subject-matter to which it applies.IP/C/W/269/Add.2
Page 7
In Articles 58 to 62 and Article 87  of the Law on Copyright and Related Rights, Law
No. 6683 of 14 October 1982 and its amendments, details are given concerning the terms of
protection for works and related rights, which are in general 70 years.
8. Please state how your legislation grants the retroactive protection provided pursuant to
Article 18 of the Berne Convention (the obligatio n of which derives from Article 9 of the TRIPS
Agreement) and Article 14.6 of the TRIPS Agreement.
It should be noted that in Costa Rica the Berne Convention for the Protection of Literary and
Artistic Works was approved as Law of the Republic No. 6083 of 29 August 1977.
Regarding retroactive protection, Article 159 of the Law on Copyright and Related Rights,
Law No. 6683 of 14 October 1982 and its amendments, contains a transitional provision to the effect
that works which, upon entry into force of the Law, were registered at the National Library and
belong to the private domain shall retain all acquired rights without the need for compliance with any
formality.
C. TRADEMARKS
9. Please give the definition of a sign under your national legislation and explain under
what conditions it is protectable .
Article 2 of the Law on Trademarks and Other Distinctive Signs, Law No. 7978 of
6 January 2000, defines a "distinctive sign" as any sign that constitutes a trademark, a trade name or
an emblem.
The same Article defines a "trademark" as any sign or combination of signs that allows the
goods or services of a person to be distinguished from those of another person inasmuch as they aresufficiently distinctive or are capable of identify ing the goods of services to which they apply in
comparison with goods or services of the same kind or category;  "trade name" is defined as a sign
bearing a name or a mixed sign that identifies or distinguishes a firm or establishment;  and "emblem"
as a representational sign that identifies or distinguishes a firm or establishment.
In addition, Articles 3 et seq. of Law No. 7978 include inter alia  provisions referring to signs
that may constitute a trademark;  trademarks that are unacceptable for intrinsic reasons;  trademarksthat are unacceptable because of third party rights; and the procedure for the registration of
trademarks.
Articles 64 et seq. of Law No. 7978 contain prov isions on trade names – which also apply to
emblems – concerning the acquisition of the rights;  unacceptable trade names (and emblems) and theprocedure for registering such signs.
10. Please confirm whether or not services are a protectable subject-matter in your
trademark law.   Please confirm if signs, such as trade names, are protectable.  Please describe if
elements such as sound, perfumes and containers are protectable.
Article 3 of the Law on Trademarks and Other Distinctive Signs, Law No. 7978 of
6 January 2000, states that trademarks refer in particular to any sign or combination of signs capable
of distinguishing goods or services.  It also states that the nature of the product or services to which
the trademark applies shall not under any circumstances be an obstacle to its registration.
Furthermore, as indicated in the reply to the previous question, the aforementioned
Law No. 7978 protects trade names as distinctive signs, specifically in Articles 64 to 69.IP/C/W/269/Add.2
Page 8
Lastly, the Industrial Property Register does not register sound nor perfumes as distinctive
signs.  Nevertheless, Law No. 7978 provides that trademarks may consist of the shape, presentation or
packaging of products, their containers or wrappi ng or the means or shops where the corresponding
products or services are sold.
11. Please explain what the requirements of use are, if any, as a condition for a trademark
registration.   Please explain the definition of use and the conditions of maintenance of a
registration in that respect.
The definition and conditions of use of a trademark are covered by Article 40 of the Law on
Trademarks and other Distinctive Signs, Law No. 7978 of 6 January 2000.
Regarding the requirement to use the trademark, Article 4 of Law No. 7978 sets out the
relevant provisions and Article 8(c) prohibits registration of a trademark if a third party has a better
right on grounds of use.
Lastly, Article 39 of the aforementioned Law No. 7978 sets out the requirements for
annulment of a registration due to failure to use the trademark.
12. Please confirm whether or not your legislation permits that the registration of
trademarks be indefinitely renewable.
Article 20 of the Law on Trademarks and Other Distinctive Signs, Law No. 7978 of
6 January 2000, provides that a trademark may be renewed indefinitely for successive ten-year
periods as of the previous date of expiry.
13. Please describe the special requirements, if any, prescribed by your legislation
concerning the use of a trademark.
As mentioned in the reply to question 4 above, Article 40 of the Law on Trademarks and
Other Distinctive Signs, Law No. 7978 of 6 January 2000, sets out the conditions for use of
trademarks;  regarding the requirement to use the trademark, Article 4 of Law No. 7978 sets out the
relevant provisions and Article 8(c) prohibits registration of a trademark if a third party has a better
right on grounds of use.
Lastly, Article 39 of the aforementioned Law No. 7978 sets out the requirements for
annulment of a registration due to failure to use the trademark.
D. GEOGRAPHICAL INDICATIONS
14. Please explain whether or not your trademark registration authority refuses a
trademark application if it contains a geographical indication.
Article 3.2 of the Law on Trademarks and Other Distinctive Signs, Law No. 7978 of
6 January 2000, states that, without prejudice to the provisions on geographical indications in theLaw, trademarks may refer to national or foreign geographical names provided that they are
sufficiently distinctive and that their use is not likely to create confusion regarding the origin, source,
qualities or characteristics of the products or services for which the trademarks are used or to which
they are applied.
In addition, Article 7(1) of the aforementioned Law provides that a sign containing a
geographical indication that does not meet the requirements in the second paragraph of Article 3
mentioned above may not be registered as a trademark.IP/C/W/269/Add.2
Page 9
15. Please give the definition of a geographical indication in your legislation.
Article 2 of the Law on Trademarks and other Distinctive Signs, Law No. 7978 of
6 January 2000, defines geographical indications as the geographical name of a country, region or
locality used in the presentation of a good to indicate its place of origin, source, processing, harvestingor mining.
16. Please describe and explain the provisions of your legislation establishing a link, if any,
between the characteristics of an indication and its geographical origin.
As indicated in the reply to the previous question, Article 2 of the Law on Trademarks and
other Distinctive Signs, Law No. 7978 of 6 Janua ry 2000, defines a geographical indication as the
geographical name of a country, region or locality used in the presentation of a good to indicate its
place of origin, source, processing, harvesting or mining.  The same Article defines an appellation of
origin as the geographical name, designation, expression, image or sign of a country, region or
locality in that country, whose qualities and characteristics are exclusively due to the geographical
medium, including natural and human factors.
17. Please describe how additional protection is granted by your legislation to wines and
spirits.  Please mention other types of products, if any, covered by this additional protection.
Article 71 of Law No. 7978 of 6 January 2000 st ates that a geographical indication (which
also applies to wines and spirits) may not be used in trade for any purpose connected with the
designation or presentation of a product or service if the indication is false or, even though literally
true with regard to the territory, region or locality of origin of the products or services, indicates or
suggests to the public a false or deceptive notion of their origin or if its use might mislead the public
as to the origin, source, characteristics or qualities of the product or services.
In addition, Article 72 of the aforementioned Law No. 7978 prohibits the use in advertising
and in trade documentation relating to the sale, presentation or offer of products or services of an
indication liable to create confusion or error as to the geographical origin of the products because they
did not originate in the place designated by the geographical indication or, even if the true origin of
the product or services is indicated, where confusion is nevertheless created in the minds of the
public.  The use of expressions such as "kind", "type", "style", "imitation" or the like in theregistration of trademarks is also prohibited.
Articles 75 et seq. of the aforementioned Law No. 7978 provide that the registration of a
trademark for wines or spirits consisting of a geographical indication may be prohibited or cancelled
if the product in question does not show the geographical indication for which registration is sought.
18. Please explain how exceptions under Article 24 of the TRIPS Agreement are used in
your jurisdiction.  Please provide examples of the use of the exceptions by courts or lists of
names considered as generic in your jurisdiction.
Article 75(c) of the Law on Trademarks  and Distinctive Signs, Law No. 7978 of
6 January 2000, provides that a sign that is the common or generic name of a product may not be
registered as an appellation of origin.  The name shall be considered a common or generic name when
it is deemed to be such by experts in this type of product or by the general public.
An appellation of origin accompanied by the generic name of the respective product or an
expression related to the product may be registered;  the protection, however, shall not extend to the
generic name or the expression used.IP/C/W/269/Add.2
Page 10
E. INDUSTRIAL DESIGNS
19. Please explain whether or not your legislat ion extends to the protection of designs
dictated essentially by technical or functional considerations.  Please explain how textile designs
are protected.
Article 25 of the Law on Patents, Industrial Designs and Utility Models, Law No. 6867 of
25 April 1983, defines an industrial design as any arrangement of lines or colours or any three-
dimensional shape, whether or not associated with li nes or colours, provided that this arrangement or
shape gives an industrial or craft product a particular appearance and can be used as a model for its
manufacture.
In addition, the aforementioned Article provides that the protection granted under the Law
does not include the elements or characteristics of the industrial design or model that are solely used
to achieve a technical or functional effect.
Costa Rica's legislation does not have any special rules on the registration of textile designs.
The provisions referred to in the reply to the previous question, notably Article 28 of Law No. 6867 of25 April 1983 and its amendments, apply to the registration of textile designs so there are no
unreasonable obstacles to the protection of this type of intellectual property.
20. Please explain how your legislation protects right holders of a design against importing
of articles bearing embodied or copied designs.
Article 25.4 of the Law on Patents, Industria l Designs and Utility Models, Law No. 6867 of
25 April 1983, provides that the owner of a protected industrial design shall have the right to prevent
third parties not having the owner's consent from making, selling or importing articles bearing or
embodying a design that is a copy, or substantially a copy, of the protected design.
21. Please state whether or not your legislation provides for the right to issue a compulsory
licence for industrial designs.
Article 31 of the Law on Patents, Industrial Designs and Utility Models, Law No. 6867 of
25 April 1983, provides that the first part of the Law – concerning patents – shall be applicable, as
appropriate, to the protection of industrial designs and utility models.
Consequently, the provisions applicable to compulsory licences for industrial designs that
implement the commitments in Article 31 of the TRIPS Agreement are paragraphs 1, 5, 6, 7, 9 and 10
of Article 18, and Articles 19 and 20 of the aforementioned Law No. 6867.  Articles 25 and 30 of the
Law on Procedures for the Enforcement of Intellectual Property Rights, Law No. 8039 of12 October 2000, also apply.
22. Please indicate for what period of time your legislation grants protection for industrial
designs.
Article 30 of the Law on Patents, Industrial Designs and Utility Models, Law No. 6867 of
25 April 1983, establishes a term of ten years for registration of an industrial design.
F. 
PATENTS
23. Please describe how your legislation defines the notions of:  novelty, inventiveness and
industrial application.IP/C/W/269/Add.2
Page 11
The first paragraph of Article 2 of the Law on Patents, Industrial Designs and Utility Models,
Law No. 6867 of 25 April 1983, provides that an invention is patentable if it is new, involves an
inventive step and is capable of industrial application.
For this purpose, paragraph 3 of the aforementioned Law states that an invention is new when
it did not previously exist in the state of the art.  The state of the art shall comprise everything that has
been disclosed or made available to the public an ywhere in the world and by any means prior to the
date of filing of the patent application in Costa Rica or, where appropriate, prior to the applicable date
of priority.  The state of the art shall also comprise the content of any other patent application pending
before the Industrial Property Register whose date of filing or, where appropriate priority, is prior to
the date of the application being examined, but only to the extent that the content thereof was included
in the earlier application when published.  The state of the art shall not comprise anything disclosedwithin the year prior to the date of filing the application in Costa Rica or, where appropriate, during
the year prior to the applicable date of priority, prov ided that such disclosure is directly or indirectly
the result of acts carried out by the inventor or his successor in title or is the result of failure to
observe the terms of a contract or of an unlawful act committed against one of the former.
The disclosure resulting from publication by an industrial property office in the course of the
procedure for granting a patent shall not be included among the aforementioned exceptions unless the
application published has been filed by a person who had no right to the patent or the publication has
been made unlawfully.
Article 2.5 of the aforementioned Law No. 6867 states that an invention shall be deemed to
involve an inventive step if, for a person with average skills in the corresponding field, the invention
is neither obvious nor obviously derived from the relevant state of the art.
Lastly, Article 2.6 of Law No. 6867 provides that an invention shall be considered capable of
industrial application when its subject-matter may be produced or used in industry, understood in the
widest sense and including inter alia  crafts, agriculture, mining, fisheries and services.
24. Please explain whether or not in your legislat ion, patent or otherwise, patent rights are
enjoyed without any exclusions.  If exclusions a re provided for, please describe in detail how
these exclusions are applied in legal as well as practical terms.
Article 1 of the Law on Patents, Industrial Designs and Utility Models, Law No. 6867 of
25 April 1983, as amended by Law No. 7979 of 6 January 2000, specifies what are not considered
inventions, as well as a series of exceptions to patentability.
For the purposes of the Patent Law, the following shall not be considered inventions:
• Discoveries, scientific theories, mathematical methods and computer programs
considered in isolation;
• purely aesthetic creations, literary and artistic works;
• economic, advertising or business plans, principles and methods and those relating to
purely mental or intellectual activities or games;
• the juxtaposition of known inventions or  the mixing of known products, or the
alteration of the shape or use, dimensions or materials thereof, except where they are
so combined or merged that they cannot function separately or where theircharacteristic properties or functions are so altered as to produce an industrial result
that is not obvious to a person with technical skill in the field concerned.IP/C/W/269/Add.2
Page 12
The following are the exceptions mentioned in Law No. 6867 and amendments thereto:
• Inventions whose commercial exploitation must objectively and necessarily be
prevented in order to protect public order, morality, human, animal or plant life orhealth or to avoid serious prejudice to the environment;
• diagnostic, therapeutic and surgical methods for the treatment of humans or animals;
• plants and animals;
• essentially biological processes for the production of plants or animals.
25. Please explain whether your legislation prov ides for the exclusion of inventions from
patentability based on ordre public  on morality.  If so, please explain the relevant section of your
legislation and explain its formulation.  Please also explain if it has been applied in practice.
As allowed by Article 27.2 of the TRIPS Agreement and in accordance with the reply to
question 24, paragraph 4(a) of Article 1 of Law No. 6867 of 25 April 1983 and its amendmentsincludes among the exceptions to patentability inventions whose commercial exploitation must
objectively and necessarily be prevented in order to protect public order and morality, among other
exceptions.
To date, the Industrial Property Register has not applied such exceptions to any application
for registration of a patent.
26. Please explain whether or not diagnostic, therapeutic and surgical methods are excluded
from patentability in your legislation.  If so, please explain the relevant section of your
legislation and explain its formulation.
As allowed by Article 27.3(a) of the TRIPS Agreement and in accordance with the reply to
question 24, paragraph 4(b) of Article 1 of Law No. 6867 of 25 April 1983 and its amendments
includes among the exceptions to patentability diagnostic, therapeutic and surgical methods for the
treatment of humans or animals.
27. Please explain whether or not plants, animals and essentially biological processes are
excluded from patentability in your legislation.  If so, please explain the relevant section of your
legislation and explain its formulation.
As allowed by Article 27.3(b) of the TRIPS Agreement and in accordance with the reply to
question 24, paragraphs 4(c) and (d) of Articl e 1 of Law No. 6867 of 25 April 1983 and its
amendments include among the exceptions to patentability plants and animals and essentially
biological processes for the production of plants or animals.
28. Please describe how micro-organisms, non-essentially biological processes,
microbiological processes and plant varieties are prot ected in your legislation.  Please explain, in
this respect, the relevant sections of your legislation.
In fixing the criteria on what is not considered an invention and on exclusions from
patentability (specified in the reply to question 24 above), Costa Rica's legislation does not take
account of micro-organisms, non-essentially biological processes or microbiological processes.  In
Costa Rica, therefore, such products or processes, if they meet the conditions for patentability laid
down in Law No. 6867 of 25 April 1983 and its amendments, may be registered as inventions.IP/C/W/269/Add.2
Page 13
In the specific case of plant varieties, Costa Rica does not yet have any special provisions
because it is covered by the delay allowed by Article 65.4 of the TRIPS Agreement.  Nevertheless, it
should be noted that the Executive has submitted a draft law on the protection of plant varieties to the
Legislative Assembly and this is now being examined by the Deputies and the sectors concerned.
This draft law is not only a response to Costa Rica's commitments under the TRIPS
Agreement, but meets an obvious need for legislation in support of the efforts made by public and
private institutions involved in the breeding of new varieties through genetic improvement
programmes.
The text used as a basis for discussion was drawn up on the basis of the model law of the
UPOV Convention of 1991.  In addition, a draft law amending the Law on Seeds is currently in thelegislative pipeline, giving the National Seeds Office the authority to register new plant varieties.
29. Please explain how your legislation protects  patent right holders against the importing
and against the offering for sale of a patented invention.
Article 16 of Law No. 6867 of 25 April 1983 and its amendments contains the provisions on
the rights conferred by patents and the limitations thereon.  Paragraph 1 of this Article provides that
one of the exclusive rights given to a patent owner is that of preventing third parties not having the
owner's consent from offering for sale or importing a product where it is the subject-matter of a patent
or, where the subject-matter of the patent is a process, from offering for sale or importing at least oneproduct directly obtained by that process.
It should also be noted that Costa Rican legislation allows parallel imports under the
conditions set out in Article 16 of the aforementioned Law No. 6867.  The second paragraph of this
Article, in accordance with Article 30 of the TRIPS Agreement, states that, provided that theseexceptions do not unreasonably conflict with a normal exploitation of a patent nor unreasonably
prejudice the legitimate interest of the patent owner or licensee, the rights conferred by the patent do
not extend to the acts of selling, offering for sale, using, importing or in any other way marketing a
product protected by a patent after it has been placed on sale in any country with the consent of the
owner or licensee.
30. Please state if your legislation provides for patent product protection of pharmaceutical
and agricultural chemical products.  In the a ffirmative, please indicate the legal reference.
Article 1 of the Law on Patents, Industrial Designs and Utility Models, Law No. 6867 of
25 April 1983 and its amendments, defines what is meant by patentable inventions, which may
include products.  Even though it is not specified in Costa Rica's law, patents may be registered forpharmaceutical or agricultural chemical products provided that they meet the patentability criteria laid
down in Article 2 of the Law.
Regarding these products, it should be noted that Article 6.8 of the aforementioned Law
No. 6867 contains a provision prohibiting their manufacture, import and marketing if, after a patenthas been registered, the Ministry of Health in the case of drugs, therapeutic articles and substances, or
the Ministry of Agriculture and Livestock in the case of agricultural chemicals, finds that the process
or product does not meet the original criteria under which it was authorized.  Such a prohibition must
be requested by the Ministry concerned and is without liability for the State.
31. Please clarify if the patent protection of a process, as provided for in your legislation,
covers the product obtained directly by that process.
As explained in the reply to question 29 above, Article 16 of Law No. 6867 of 25 April 1983
and its amendments covers the rights conferred by patents and the limitations thereon.  Paragraph 1(b)IP/C/W/269/Add.2
Page 14
of the Article defines the owner's rights where the subject-matter of the patent is a process in cases in
which certain acts are carried out in respect of at least one product obtained directly by that process.
32. Please explain the additional conditions, if any, in your legislation other than the
sufficient disclosure of the invention in Articl e 29 of the TRIPS Agreement (e.g. submission of
justification for access to genetic material or prior informed consent to its use).  If such
additional conditions exist, please point out the relevant legislations and describe the additional
conditions in detail.
Article 6(4) of the Patent Law lays down the requirements for the filing of applications in
accordance with Article 29 of the TRIPS Agreement.
In the case of patents involving elements of biological diversity, Articles 63 et seq. of the Law
on Biological Diversity, Law No. 7788 of 30 April 1998, set out the regulations for access to genetic
and biochemical elements of biodiversity ex situ  and in situ  and Article 65 contains the provision on
prior informed consent.  Nevertheless, these provisions have not yet been put into effect so for the
moment they cannot be used against third parties.
In this connection, one important provision that must be taken into account is Article 68 of the
aforementioned Law on Biological Diversity, which determines as a rule of interpretation that the
provision in this Law on access to genetic and biochemical elements of biodiversity shall not
constitute a disguised restriction on nor a barrier to trade.  The Article also states that anyinterpretation to the contrary will be declared null by the administrative or legal authorities, as
appropriate.
33. Please describe if your legislation provides for limited exceptions to the exclusive rights
conferred by a patent.  If affirmative, please make a reference to relevant legislation.
Article 16 of Law No. 6867 of 25 April 1983 and its amendments contains the provisions on
rights conferred by patents and limitations thereon.  The exceptions to these rights are specified in
paragraph 2 of the Article, which states that they  shall apply provided that they do not unreasonably
conflict with a normal exploitation of the patent and do not unreasonably prejudice the legitimate
interests of the patent owner or his licensee.
The rights conferred by a patent do not extend to legal acts of any nature provided that they
are carried out in a private circle and for non-commercial purposes;  acts carried out for experimental
purposes relating to the subject-matter of the invention patented;  and parallel imports (in the terms
described in the reply to question 29 above), inter alia .
34. Please explain whether or not your legislatio n provides for compulsory licensing.  If so,
please explain in detail the conditions under which a compulsory licence may be granted.  In
particular, please explain how your national le gislation considers individual merits in the
authorization of such use.
The Law on Patents, Industrial Designs and Utility Models, Law No. 6867 of 25 April 1983
and its amendments, covers the possibility of granting compulsory licences according to the criteria
set out in Article 31 of the TRIPS Agreement on "Other use without authorization of the right holder".
The provisions implementing the commitments imposed by Article 31 are paragraphs 1, 5, 6,
7, 9, and 10 of Article 18, Articles 19 and 20 of the aforementioned Law No. 6867, together with
Articles 25 and 30 of the Law on Procedures for the Enforcement of Intellectual Property Rights, Law
No. 8039 of 12 October 2000.IP/C/W/269/Add.2
Page 15
Regarding the individual merits of the applican t for a compulsory licence, paragraph 6 of the
aforementioned Article 18 states that he must have already proved that he has sufficient capacity to
work the patented invention and that he has tried to obtain an authorization from the owner of the
rights, on reasonable commercial terms and conditions, and that his efforts have not been successful
within a period of three years as of the date of granting of the patent or four years as of the filing ofthe patent application, whichever is the longer.
35. Please explain how your legislation explicitly ensures that a proposed user has made
efforts to obtain authorization from the righ t holder on reasonable commercial terms and
conditions and that such efforts have not been successful within a reasonable period of time.  In
this context, how do you define "reasonable period of time".  Please also explain how your
legislation ensures that the use of a compulsory  licence shall be author ized predominantly for
the supply to the domestic market of the Member authorizing such use.
Regarding the definition of a reasonable period of time in Costa Rica's Law, Article 18 of the
Law on Patents, Industrial Designs and Utility Models, Law No. 6867 of 25 April 1983 and its
amendments, provides that the granting of a patent in volves the obligation to work the patent in Costa
Rica in a permanent and stable manner so as to ensure that the market has an adequate and reasonable
supply within a period of three years as of the date of granting of the patent or four years as of the
date of filing the patent application, whichever is longer.  Working of the patent may not be
suspended for more than one year.
Regarding the granting of a patent in order to supply the market, paragraph 3 of the
aforementioned Article 18 provides that, for this purpose, local production and lawful import of the
product shall be considered forms of exploitation.
36. Please state if your legislation grants addi tional protection for innovations after the
20 years of patent protection has lapsed.
Before the entry into force of Law No. 7979 of 6 January 2000, which amends the Law on
Patents, Industrial Designs and Utility Models, Law No. 6867 of 25 April 1983, Costa Rica granted a
term of 12 years' protection to patents in general but only one year for patents for drugs, food
products, agricultural chemicals, inter alia .
One of the most important amendments to Law No. 7979 is that to Article 17 of the
aforementioned Law No. 6867, which extends patent protection by 20 years.  Costa Rica does not
grant any additional protection to inventions after the expiry of this term.
37. Please explain how your legislation provide s for the enhanced patent protection of
patents or patent applications pending on 1 January 1995.
According to a transitional provision in Law No.7979 of 6 January 2000, which amends the
Law on Patents, Industrial Designs and Utility Models, when the term of a patent is less than 20 years
– according to the amendment to Article 17 of the aforementioned Patent Law No. 6867, of25 April 1983 – and protection of the subject-matter has not fallen into the public domain, the owner
may request an extension of the term subject to making an application in writing to the Industrial
Property Register prior to the expiry of the patent in Costa Rica.  In other cases, the amendments
introduced by Law No. 7979 shall apply.
In this connection, to date, nine requests for the extension of the term of patents have been
granted.
38. Please explain how your legislation provides for the reversal of the burden of proof in
relation to process patents.IP/C/W/269/Add.2
Page 16
Costa Rican legislation provides for the principle of the burden of proof for process patents in
accordance with the obligation deriving from Article 34 of the TRIPS Agreement.  The specific
provision implementing that obligation can be found in Article 39 of the Law on Procedures for the
Enforcement of Intellectual Property Rights, Law No. 8039 of 12 October 2000.
G. LAYOUT -DESIGNS (TOPOGRAPHIES ) OF INTEGRATED CIRCUITS
39. Please describe how your legislation protects topographies.
There was no legislation in Costa Rica protecting layout-designs (topographies) of integrated
circuits until the enactment of a special law, Law No. 7961 of 17 December 1999 entitled "Law on the
Protection of Layout-Designs of Integrated Circuits ".  This Law includes the following provisions:
• The technical concepts necessary to protect layout-designs are defined.
• The requirements of originality are determined.
• Acts that are lawful or unlawful if carried out without the permission of a right holder
are defined.
• The terms of protection are defined.
40. Please explain what protection your national  legislation grants to right holders against
the unlawful importation, sale or distribution for commercial purposes of topographies
including integrated circuits or other articl es in which a topography is incorporated in
accordance with Article 36 of the TRIPS Agreement.
Article 8 of Law No.7961 of 17 December 1999 determines the exclusive rights conferred on
the owner by registration of a layout-design of an integrated circuit.  More specifically, the Article
gives the owner the right to prevent third pers ons from performing any of the following acts:
• Reproducing, through incorporation in an integrated circuit or in any other way, all or
part of the protected layout-design that complies with the requirement of originality.
• Marketing, importing, offering for sale, selling or otherwise distributing the protected
layout-design, an integrated circuit incorporating this design or an article containing
the circuit.
41. Please explain how your legislation provi des for the derogation from Article 36 as
specified in Article 37 of the TRIPS Agreement where a person has no knowledge or reasonable
grounds to know when acquiring an integrated circuit or an article incorporating such an
integrated circuit that it contains an unlawful topography.
Article 13 of Law No. 7961 of 17 December 1999 contains a provision entitled "innocent
infringer", according to which performance of any of the acts covered by the exclusive rights of the
owner in respect of an integrated circuit that unlawfully incorporates a layout-design or an article
containing such an integrated circuit shall not be  considered an infringement of the rights in a
registered layout-design where the person performing the act does not know or has no reasonable
ground to know that the layout-design had been reproduced unlawfully.
Without prejudice to the provision cited in the previous paragraph, after a person has been
informed that the layout-design was unlawfully reproduced, he may continue to perform the acts withIP/C/W/269/Add.2
Page 17
respect to the stock on hand or ordered before such time, nevertheless, at the request of the owner of
the right, he shall pay compensation equivalent to the royalty that would be payable under a licence.
42. Please state the term of protection granted by your legislation to topographies.
Article 7 of Law No. 7961 of 17 December 1999 establishes the term of protection for layout-
designs as 10 years as of the date of filing the application for registration or the last day of the
calendar year in which the layout-design was first commercially exploited anywhere in the world,
whichever is the earlier.
Paragraph 2 of this Article also states that the protection of a registered layout-design shall in
any event lapse at the expiry of a period of 15 years from the last day of the calendar year in whichthe layout-design was created.
H.
PROTECTION OF UNDISCLOSED INFORMATION
43. Please explain whether or not your legislatio n grants a defined period of time for the
protection of undisclosed information.  If so, please give the time span.
Costa Rica had no special legislation on undisclosed information until the enactment of Law
No. 7975 of 4 January 2000.  This Law does not fix a specific period for the protection of this type of
business or industrial secret.  Protection is permanent provided that the undisclosed information meets
the requirements laid down in Article 2 of the Law.
44. Please explain how your legislation defines undisclosed information.
Article 2.1 of Law No. 7975 of 4 January 2000 provides protection for undisclosed
information, meaning information referring to business or industrial secrets which a natural or legalperson keeps confidential in order to prevent info rmation lawfully within their control from being
disclosed to, acquired by or used by others without their consent in a manner contrary to honest
commercial practices, provided that the information meets the following requirements:
• Is secret in the sense that it is not, as a body or in the precise configuration and
assembly of its components, generally known among or readily accessible to persons
within the circles that normally deal with the kind of information in question.
• The person lawfully in control of the information has taken reasonable and
proportionate steps to keep it secret.
• Has commercial value because it is secret.
45. Please explain how your legislation de fines data submitted to governments or
governmental agencies.
One of the innovations introduced into Costa Rican legislation by Law No. 7975, the Law on
Undisclosed Information of 4 January 2000, is the regulation of the circumstances in which
undisclosed test or other data must be submitted to official bodies as a condition of approval of the
marketing of pharmaceutical or agricultural chemical products;  such data shall be protected againstany unfair commercial use and any disclosure, in accordance with the provisions of Article 8 of the
aforesaid Law No. 7975.IP/C/W/269/Add.2
Page 18
The competent bodies are currently working on the regulations necessary to implement this
legislation.  Among other things, the regulations will deal in more detail with the scope of Article 8 of
the aforesaid Law.
In addition, attention should be drawn to Ar ticle 9 of the aforesaid Law No. 7975, which
refers to the protection of undisclosed information in administrative or judicial proceedings.  It
provides that, in any administrative or judicial pr oceedings in which one of the parties is required to
present undisclosed information, the authority hearing the case shall take all necessary steps to
prevent its disclosure to third parties not involved in the dispute.
II. ENFORCEMENT
46. Please describe how your legislation provides for effective action against infringement of
intellectual property rights.
The Law on Procedures  for the Enforcement of Intellectual Property Rights, Law No. 8039
of 12 October 2000, introduces important provisions to protect the holders of intellectual property
rights through the establishment of preventive measures, border measures, administrative proceedingsand civil and criminal proceedings.
The most relevant aspects of these provisions are as follows:
• Protection of intellectual property right holders by means of the necessary rules on
preventive measures (including those applied by the customs).
• Preventive measures can be applied by the administrative or judicial authorities,
provided that the applicant can prove that he is the right holder or his representative.
The competent authorities will require security from the applicant sufficient to protect
the alleged infringer and prevent abuse.
• Requirement to grant a hearing on the application of preventive measures, unless this
might render them ineffective;  however, where a preventive measure has beenimposed without a hearing, the authority shall notify the party concerned within
three working days of its imposition, at the latest.
• The applicant must file an administrative  complaint or initiate legal proceedings
within one month of notification of the decision ordering the preventive measure.
• The right holder may request the administrative or judicial authorities to order the
customs authorities to suspend importation or exportation at the time of clearance;
however, he must prove that he is the right holder or his representative, provide
security and supply the necessary information and a description of the goods so that
they are readily identifiable by the customs authorities.
• The customs authorities must act ex officio and suspend clearance of the goods if
there is a presumption that they infringe an intellectual property right.  The authorities
must report the commission of the offence to the Public Prosecutor's Office within
24 hours of retaining the goods.
• The judicial authorities may order the customs authorities to destroy or dispose of the
infringing goods.
• Protection of injured parties in the event of wrongful detention of the goods.IP/C/W/269/Add.2
Page 19
• Establishment of an Administrative Registration Court that will exhaust the
administrative remedies and hear appeals against decisions taken by the IndustrialProperty Register and the National Regi ster of Copyright and Related Rights.
• Provision for the holding of summary civil intellectual property proceedings.
• Prison sentences for offences against intellectual property rights.
47. Please explain whether or not your legislation provides for a mechanism to appeal to
judicial bodies of final administrative decisions.
Article 49 of Costa Rica's Political Constitution provides for administrative litigation
jurisdiction within the Judiciary in order to guar antee the legality of the State's administrative
function, of its institutions and of any other public body.
In this connection, once the Regulations of the Law on Procedures for the Enforcement of
Intellectual Property Rights, Law No. 8039 of 12 October 2000, are in force and the Administrative
Registration Court is functioning, appeals against decisions taken by the Court may be made through
administrative litigation channels.  The special provisions applicable to this procedure are to be found
in the Law Regulating the Administrative Litigation Jurisdiction, Law No. 3367 of 12 March 1966and its amendments.
It should be recalled that, in view of the n eed to strengthen administrative procedures in
intellectual property cases and thus avoid recourse to judicial channels, Articles 19 et seq.  of Law
No. 8039 provide for the creation of the Administrative Registration Court, which will exhaustadministrative channels for any appeals lodged against decisions of the Register of Industrial Property
and the National Register of Copyright and Related Rights, as well as other registers forming part of
the National Register.
48. Please describe how your legislation authorizes judges to order production of evidence
by the opposing party.  Please give precise information on what measures are taken to ensure
the protection of confidential information.
Pursuant to the Code of Civil Procedure and the Law on Procedures for the Enforcement of
Intellectual Property Rights, Law No. 8039, at the request of the opposing party, the judicialauthorities may order a party to a proceeding to produce evidence within its control.  Article 39 of the
Law on Procedures for Enforcement, for example, states that "In abridged proceedings or in cases of
unfair competition in the context of summary proceedings, where a party has identified any relevant
evidence to substantiate its claims and this lies within the control of the opposing party, the judge
shall be empowered to order him to produce it."
As far as undisclosed information (business or industrial secrets) is concerned, Article 39 of
Law No. 8039 on Procedures for Enforcement provides that, where a request is made for evidence
within the control of the opposing party, it shall be presented on condition that its protection is
guaranteed.
In addition, Article 9 of the Law on Undisclosed Information, Law No. 7975 of
4 January 2000, states that "In any administrative or judicial proceedings in which one of the parties is
required to present undisclosed information, the authority hearing the case shall take all necessary
steps to prevent its disclosure to third parties not in volved in the dispute.  None of the parties to the
proceedings may disclose or use such information."IP/C/W/269/Add.2
Page 20
49. Please quote provisions of your legislation that authorize judges to order a defendant to
desist from an infringement.
Article 5 of the Law on Procedures for the Enforcement of Intellectual Property Rights,
Law No. 8039, provides that the immediate cessation of the acts constituting the infringement are oneof the preventive measures that may be ordered by the competent authorities.
50. Please quote what provisions of your legislation authorize judges to order the payment
to the right holder of adequate damages to compensate the injury he suffered.
Pursuant to Article 221 of the Code of Civil Procedure, in judgements when the case
examined has been resolved definitively by means of a ruling on the claim made in the complaint, andin orders with the status of judgements when deciding on exceptions or incidental claims which
terminate the proceedings, the losing party shall be ordered to pay the personal and procedural costs,
including attorney's fees.
Moreover, Articles 8 and 9 of Law No. 8039 on Procedures for the Enforcement of
Intellectual Property Rights provide that if a preventive measure was requested prior to the
proceedings and a petition is not presented within one month from notification of the order imposing
the measure or if the preventive measure is annulled or for any other reason becomes without effect,
any person claiming the right to compensation for the injury caused as a result of the measure's
imposition shall make a request within one month to the body hearing the initial case.  If he does notmake such a request within this period or does not prove his right, an order shall be issued for the
return of the security for damages deposited.
51. Please quote what provisions of your legislation authorize judges to order the payment
of the right holder's expenses by the infringer.
As indicated in the reply to the previous question, according to Article 221 of the Code of
Civil Procedure, in judgements when the case examined has been resolved definitively by means of a
ruling on the claim made in the complaint, and in orders with the status of judgements when deciding
on exceptions or incidental claims which terminate the proceedings, the losing party shall be ordered
to pay the personal and procedural costs, including attorney's fees.
52. Please explain if and how judges have the authority to order that infringing goods are
placed outside channels of commerce or destroyed.
Article 17 of the Law on Procedures for the Enforcement of Intellectual Property Rights, Law
No. 8039 of 12 October 2000, contains a provision on the destruction and seizure of goods.  ThisArticle provides that, when a judicial authority issues an order authorizing the destruction of goods, it
shall take into account the interests of third parties and the proportionality between the seriousness of
the infringement and the measure ordered.  The final decision by the judicial authority may provide
that the customs authorities destroy or dispose of counterfeit or illegal goods.
The customs authorities shall not permit the reexport of counterfeit or illegal goods in an
unaltered state or subject them to a different cust oms procedure, until the competent judicial authority
takes a decision on their destination or destruction.
Articles 41 and 71 of Law No. 8039 of 12 October 2000 also provide that in civil and criminal
proceedings, at the request of a party or ex officio, the judicial authorities may order the seizure of the
counterfeit or illegal goods, either in the form of an interlocutory order or in a ruling.  The destruction
of the goods may be ordered in a ruling.IP/C/W/269/Add.2
Page 21
53. Please quote what provisions of your legislation authorize judges to indemnify an
defendant in the event of abuse by the plaintiff.
According to Article 3 of Law No. 8039 of 12 October 2000, when ordering a preventive
measure, the judicial authorities, the Industrial Property Register or the National Register ofCopyright and Related Rights shall require the person requesting the measure to deposit sufficient
security before ordering the measure in order to protect the alleged infringer and prevent abuse.
Article 9 of the aforementioned Law No. 8039 prov ides that, if a judicial complaint is not
lodged within the time-limit or if the provisional measure is annulled or for any other reason becomes
without effect, any person claiming the right to compensation for the injury caused as a result of the
measure's imposition shall make a request within one month to the authority hearing the original case.If he does not make such a request within this period or does not prove his right, an order shall be
issued for the return of the security for damages deposited.
According to Article 227 of the Code of Ci vil Procedure, in civil proceedings when
preventive seizure has been ordered, if a complaint is not submitted within the time-limit fixed for thispurpose or is definitively rejected in a final ruling, the seizure shall be lifted and the plaintiff shall be
ordered to compensate for the injury caused.  Accord ing to the provisions in the Criminal Code, it is
also possible to bring an accusation for slander and, ei ther in criminal or civil proceedings, to bring a
civil action for indemnification of the injury caused.
54. Please explain how your legislation implements Article 50 of the TRIPS Agreement.
Section I, Chapter II of Law No. 8039 of 12 October 2000, the Law on Procedures for the
Enforcement of Intellectual Property Rights, establishes the rules relating to preventive measures.
The following are among the most relevant provisions:
• Preventive measures can be applied by the administrative or judicial authorities,
provided that the applicant can prove that he is the right holder or his representative.
The competent authorities will require security from the applicant sufficient to protect
the alleged infringer and prevent abuse.
• Referral to the Code of Civil Procedure and the Code of Criminal Procedure for the
application of preventive measures, although some of the measures that may berequested are mentioned, including the cessation of the acts that constitute
infringement; seizure;  the suspension of release of the goods, and the deposit of
security.
• Requirement to grant a hearing on the application of preventive measures, unless this
might render them ineffective; however, where a preventive measure has been
imposed without a hearing, the authority shall notify the party concerned withinthree working days of its imposition, at the latest.
• The applicant must file an administrative  complaint or initiate legal proceedings
within one month of notification of the decision ordering the preventive measure.
55. Please identify the competent authorities in your jurisdiction who receive requests from
right holders for an application to suspend the release of counterfeit goods by the customs
authorities.
Article 10 of Law No. 8039 of 12 October 2000 empowers the right holder to request the
administrative authorities (Director of the Industrial Property Register or the Director of the NationalIP/C/W/269/Add.2
Page 22
Register of Copyright and Related Rights) or the judicial authorities to order the customs authorities
to suspend import or export of counterfeit goods at the time of clearance;  however, he must prove
that he is the right holder or his representative, provide security and supply the information and a
description of the goods so that they are readily identifiable by the customs authorities.
56. Please indicate whether or not procedures are available to suspend the exporting of
counterfeit goods.
Articles 10 et seq. of the Law on Procedures for the Enforcement of Intellectual Property
Rights, Law No. 8039 of 12 October 2000, establish the rules relating to border measures.  These
provisions apply to all intellectual property rights.
The provisions on the application of border measures in the aforementioned Law No. 8039
include the following:
• The right holder may request the administrative authorities (Director of the Industrial
Property Register or the Director of the National Register of Copyright and Related
Rights) or the judicial authorities to order the customs authorities to suspend import orexport of counterfeit goods at the time of clearance;  however, he must prove that he is
the right holder or his representative, provide security and supply the information and a
description of the goods so that they are readily identifiable by the customs authorities.
• The customs authorities must act ex officio and suspend release of the goods if there is a
presumption that they infringe an intellectual property right.  The authorities must report
the commission of the offence to the Public Prosecutor's Office within 24 hours of
retaining the goods.
• The customs authorities must, in response to an application by the right holder,
communicate the name and address of the shipper, the importer or exporter and the
consignee of the goods, as well as the volume and description of the goods withheld,provided that the Industrial Property Register, the National Register of Copyright and
Related Rights or the judicial authorities have proof of an infringement.
• The customs authorities may act ex officio to suspend the release of goods.
• The judicial authorities may order the customs authorities to destroy or dispose of the
infringing goods.
• Protection of injured parties in the event of wrongful detention of the goods.
57. Please quote what provisions of your legisl ation authorize the competent authorities to
order the destruction or disposal of infringing goods.
As indicated in the reply to question 52 above, Articles 41 and 71 of Law No. 8039 of
12 October 2000 provide that in civil and criminal pro ceedings, at the request of a party or ex officio,
the judicial authorities may order, either in the form  of an interlocutory ruling or in a judgement, the
seizure of counterfeit or illegal goods.  The destruction of the goods may be ordered in a judgement.
58. Please indicate whether or not your legislation provides for a de minimis imports
exception.IP/C/W/269/Add.2
Page 23
Article 12 of Law No. 8039 of 12 October 2000 specifies the cases in which border measures
do not apply.  In this connection, the Law determines that border measures do not have to be applied
to lawful imports and quantities of goods that are contained in travellers' personal luggage.
59. Please explain how your legislation implements Article 61 of the TRIPS Agreement.
With respect to Article 61 of the TRIPS Agreement, one of the main innovations of the Law
on Procedures for the Enforcement of Intellectu al Property Rights, Law No. 8039 of 12 October 2000,
is the establishment in Articles 44 et seq. of a list of offences for the purpose of protecting legal
interests deriving from trademarks and distinctive signs, undisclosed information, copyright and
related rights, patents, industrial designs, utility models and layout-designs of integrated circuits.  All
these offences are punishable by a prison sentence of one to three years.
Nevertheless, the Government of Costa Rica is aware that the enactment of Law No. 8039 is
only the beginning of a legislative and educational process of securing effective protection for
intellectual property rights.  Accordingly, the Govern ment has taken the initiative of submitting to the
Legislative Assembly a draft law amending Law No. 8039, which will increase the prison sentencesfor offences against intellectual property rights to four years, reform the proceedings for copyright
offences to make them public, and repeal Article 70 of the Law relating to the principle of significant
injury.
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