Patent Law Overview
There is no legislation in Puerto Rico which provides for the registration of patents. The protection afforded by the US law on patents registered in that country also extends to Puerto Rico.
Trademark Applications in Puerto Rico :
1. The name of the applicant, business and mailing addresses, and telephone number.
2. Citizenship of the applicant, in case of an
individual, or the place, state or country where
the applicant was organized or incorporate.
3. List of goods/services and the classes pertaining thereto.
4. If the application is based on use, the date of first use is required and original specimens of the mark as used.
5. Power of Attorney simply signed.
Nice classification, 10th edition
The application is filed at the Trademark Registry, which is kept by the government.
A single application cannot cover multiple classes. Each class of the same trademark would be considered a separate and independent application, resulting in a separate and independent registration.
All applications based on the use of the mark in Commerce and all Declarations of Use must include a specimen.
There is no priority available in Puerto Rico currently.
The application process includes a formal examination, an examination of distinctiveness, descriptiveness, deceptiveness, and a search for prior trademarks registered in Puerto Rico.
The processing time from first filing to registration or first office action is approx. 2 years if no office actions are issued.
The opposition period is 30 days from the publication date of the application. The 2009 Act provides, for an extension of time of 20 days (with just cause) to file an opposition to the registration of a mark after the 30 opposition period has lapsed. The extension has to be requested prior to the expiration of the original 30 day term.
A trademark registration is valid for 10 years from the date of registration, which dates back to the filing date and can be renewed for equal periods.
Puerto Rico Trademark Law
Legal basis is the Puerto Rico Trademark Act, in force since February 14th, 1992 last amended by Act 169 of December 16th, 2009 and further amended by Act 124-2011. Although Puerto Rico is part of the USA with special status, it has a trademark law independent of the USA. The former alternative of obtaining a Puerto Rico Trademark based on an US registration is no longer available.
Trademark protection is obtained by registration in the case of marks that are not in use (intent-to-use applications) and by prior use in the case of marks that are in use in Puerto Rico. Secondary meaning can be obtained by proving use of the trademark in commerce for the last five years.
Puerto Rico is a Commonwealth of the United States. It is unique in the sense that it is neither a state nor an independent country, and it has a significant amount of self-government. However, for many purposes Puerto Rico is treated as if it were a state.
The Puerto Rico Federal Relations Act provides that the statutory laws of the United States shall have full effect in Puerto Rico, unless locally inapplicable. Therefore, rights acquired under the Lanham Act are valid and enforceable in Puerto Rico.
In addition to the applicability of the Lanham Act, Puerto Rico has its own trademark registration system and its own trademark statute, the Puerto Rico Trademark Act, which coexists with the Lanham Act. A partial pre-emption will take place when a provision of Puerto Rico Trademark Law runs in conflict with a provision of federal trademark law.