Legal Update

HOW DID THE INTELLECTUAL PROPERTY ENDED UP IN THE NATIONAL PLAN OF DEVELOPMENT 2014-2018?

September 21,2015

HOW DID THE INTELLECTUAL PROPERTY ENDED UP IN THE NATIONAL PLAN OF DEVELOPMENT 2014-2018?

The enactment of the Law 1753 of 2015, by means of which it is issued the National Plan of Development (PND for its acronym in Spanish) 2014-2018 “all for a new country”, draws us to analyze the Industrial Property status in this new quadrennial of Santos Government. Let’s see the important issues:

Works for hire

We should remember that in the Law 1450 of 2011, whereby the PND 2010-2014 was issued, amended in an important way the issue of works for hire, by allowing that the transfer presumption of the property rights not only shall apply to the contracts for services, but also in the employment contracts, and set forth that this presumption shall apply if the contract is by written and in the necessary way for the exercise of the employer’s rights or from the one who placed the order at the time of the work creation.

At the same time, the PND 2014-2018 has set forth that in order to give continuity to the plans of Law 1450 of 2011, this article shall continue in force until being repealed or modified by a subsequent law.

Transfer of the proprietary copyright and neighbouring rights

With respect to this issue, the PND 2010-2014 eliminated the requirement of public deed or personal appearance before notary for the validity of the transfer of rights agreement, demanding only that the agreement must be expressed in writing. In addition, it was established with a supplementary condition a term of five (5) years and a territory consistent in the country in which the transfer is made, in case of not providing for these something different in the agreement.

In virtue of the Law 1753 of 2015, this article shall also continue in force during this quadrennial.

Industrial Property transfer presumption

In the same way, it shall also continue in force the article that presumes the industrial property rights transfer, in favor of the person entrusting the work or employer, so long as the agreement is expressed in writing.

Intellectual Property Rights from research projects

This is the relevant amendment made by the Law 1753 of 2015 on Industrial Property issues in connection with the PND 2010-2014. The article 31 of the prior PND had defined that the State shall transfer the intellectual property rights to the parties of the science, technology and innovation projects, that were conducted with resources from the national budget. That was suggested as a rule of an imperative character, to which however, some of the public entities had considered the non applicability for them of this rule.

In view of these interpretation issues, the new PND 2014-2018 suggests some changes in the rule, consisting of: a wording of a facultative character upon setting forth that “the State may transfer free of charge” the broaden of its scope by covering both research and development projects, and the inclusion of the information and communications technology (ICT) sector. Likewise, this new PND no longer refers to projects conducted with “national budget resources” but to those conducted with “public resources”, which could include public resources existing outside the budget items.

However, this new wording suggested by the article 10 of the PND 2014-2018 it’s still ambiguous, therefore a paragraph was included in this article setting forth a term of one year as of the validity of this new PND, in order for the National Government to regulate this issue.

Conclusions

The continuation of the Intellectual Property Rules in this new PND 2014-2018, is without a doubt an important tool for the companies, allowing them to safeguard their interests and acquire the intellectual property rights from the creations of their workers and contractors, for which they were hired.